7.11.1.1 Relevant Act

Also in this Chapter:

• 7.11.1.1 Relevant Act
• 7.11.1.2 Subsection 223(1) - Office Error
• 7.11.1.3 Subsection 223(2) - Error or Omission and Circumstances Beyond Control
• 7.11.1.4 Subsection 223(2A) - Despite Due Care
• 7.11.1.5 Common Deficiencies in Requests under Section 223(2) or (2A)
• 7.11.1.6 Advertising an Extension - Subsection 223(4)
• 7.11.1.7 Extension of Time for an Extension of Term
• 7.11.1.8 Grace Period Extensions
• 7.11.1.9 Extension of Time to Gain Acceptance
• 7.11.1.10 Examination Report Delayed or Not Received
• 7.11.1.11 Co-pending Section 104 Application - Budapest Treaty Details
• 7.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Applicaiton
• 7.11.1.13 Person Concerned: Change of Ownership
• 7.11.1.14 Date of a Patent Where an Extension of Time is Granted to Claim Priority

Key Legislation:

Patents Act:

• s24 Validity not affected by making information available in certain circumstances  
• s70 Applications for extension of patent  
• s223 Extensions of time  

Patents Regulations:

• reg 2.3 Divisional applications--period
• Chapter 5 Opposition
• Chapter 20 Individual Patent Attorneys

In this topic:

Overview

“relevant act that is required to be done within a certain time”​​​​​​​

Overview

The Commissioner can only extend the time period under section 223 for doing a relevant act.  Section 223(11) defines this term:

relevant act means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.

The prescribed actions for which extensions under section 223 must not be granted include:

• any action mentioned in Chapter 5 of the Regulations (oppositions provisions), other than filing a notice of opposition or statement of grounds and particulars;
• filing an application under section 70(1) for an extension of term of a pharmaceutical patent after the normal term of the patent has expired (Aspen Pharma Pty Ltd and Ors and Commissioner of Patents and H Lundbeck (Joined Party) [2012] AATA 851; followed in Merck Sharp and Dohme Corp and Commissioner of Patents [2013] AATA 71);
• any action in Chapter 20 of the Regulations (these relate to the registration, privileges and professional conduct of patent attorneys).

“Relevant act that is required to be done within a certain time”

The time can only be extended for those acts for which there is a legislative requirement that the act be done within a certain time.  

Thus, in Ashmont Holdings v Nature Vet and American Home Products [2001] APO 43, section 223(2) was considered to be applicable to extend the time period prescribed by reg 2.3(2) for filing a complete application for the purposes of section 24(1)(b).

However, in Norman Stibbard v The Commissioner of Patents 7 IPR 337, the AAT upheld the delegate's decision to refuse an extension of time to lodge a complete patent application where no earlier priority rights existed, on the basis that there was no time period in the legislation that was not complied with.  

Other actions that do not constitute a ‘relevant act’ for the purposes of section 223; and the time for which cannot be extended under section 223 include:

• making a micro-organism deposit under the Budapest Treaty;
• where examination was requested prior to 15 April 2013, filing an examination response within 12 months from the date of the examiner’s 1st report.
• requesting examination wherein an applicant seeks an extension of time to avoid the application of amended legislation (Sunesis Pharmaceuticals Inc V Commissioner of Patents [2015] FCAFC 29)​​​​​​​​​​​​​​