7.11.1.11 Co-pending Section 104 Application - Budapest Treaty Details

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
• ​​​​​​​7.11.1.12 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:

• s6 Deposit requirements  
• s105 Amendments directed by court  

Patents Regulations:

• reg 1.5 Deposit requirements: prescribed period
• reg 22.2C Failure to pay: certain other filing fees etc

Related Chapters:

• 7.11.1.3.5 The Commissioner's Discretion

Section 6(c) requires the specification to include Budapest treaty deposit details by the end of the period prescribed in reg 1.5.  Where an applicant applies for an extension of this time, there will generally also be a co-pending section 104 action to insert the Budapest treaty deposit details.  The relevant time must be extended up to when the amendments have been allowed.

Therefore the extension request will need to allow sufficient time for the examiner to consider and allow the section 104 request.

Any shortfall of the total fees payable is covered by reg 22.2C and will need to be paid within the time frame set by that regulation.

Note: An extension of time under section 223 is not available to make a deposit of a micro-organism under the Budapest Treaty.  See 7.11.1.1 Relevant Act and 7.11.1.3.5 The Commissioner's Discretion under “No useful purpose”