7.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Application

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
• ​​​​​​​7.11.1.13 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:

• s223 Extensions of time

Situations sometimes arise where a request under section 223 has been filed to pay a continuation or renewal fee - and a subsequent anniversary passes after the request has been filed but before the request is allowed.

If a section 223 request has been filed for the purposes of paying a continuation or renewal fee, applicants intending to maintain their application or patent should ensure that any continuation or renewal fees falling due after the date of the section 223 request, and before the date of allowance of that request, are timely paid - even though the section 223 request has not yet been allowed.  If the section 223 request is not allowed, any continuation fee or renewal fee payments that are of no effect will be refunded.

Applicants should note that the allowance of the section 223 request is not dependent on payment of the fee for that later anniversary and that there is no requirement or obligation for the Commissioner to advise the applicant of an outstanding fee or ask for payment.  Consequently, failure to timely pay subsequent continuation or renewal fees while a section 223 request is pending may result in the application or patent being restored in respect of the historic period - but remaining lapsed or ceased as of the date of allowance of the request through the failure to pay the later anniversary fee.

Furthermore, the grace period fees for those continuation or renewal fees that fall due after the section 223 application has been filed will need to be paid.  Failure to pay the fee within the period of grace will result in the application lapsing or the patent ceasing, notwithstanding that for the historic period, the section 223 request may be allowed.  

See for example: Total Peripherals Pty Ltd v Commissioner of Patents and International Business Machines Corporation (1998) AATA 784 and International Business Machines Corporation v Total Peripherals Pty Limited [2000] APO 44.