Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Extensions under Subsection 223(1) to Gain Acceptance

Date Published

Key Legislation:

Patents Act:

  • s223 Extensions of time  

It is not possible to list all possible sources of "error or omission" by a person at the Patent Office that could give rise to an extension of time under section 223(1).  

However, examples of situations where an error could be said to have occurred to cause the failure to gain acceptance are:

  • PAMS was not available to complete the acceptance task by the close of business on the final date for acceptance;
  • an error message in PAMS prevented the completion of the acceptance task by the close of business on the final date for acceptance;
  • a examination response was received by the Office a week before the final date for acceptance, but not forwarded to the examiner;
  • the examination response was in the examiner's possession, but there was a failure to act in a timely manner.

A situation which does not involve an error or omission within the meaning of section 223(1) is where the response was filed on the last day for acceptance, with insufficient time to create and consider an exam response task.  There is an expectation that the applicant must take reasonable steps to ensure that the response reaches the examiner in time for it to be considered and processed for acceptance.

If an examiner believes that an extension of time for acceptance under section 223(1) is warranted, they must bring the matter to the attention of their Supervising Examiner.  If in agreement, the Supervising Examiner fills in a case note (a blank copy of which is included at Annex A).  The case note should:

  • set out the basis for the exercise of the delegation (i.e. identify the error or omission), and include a statement that the application is (on the basis of the material filed before the date for acceptance) otherwise ready for acceptance; and
  • recommend the exercise of power by Deputy Commissioner (OEP).

The file note is to be given to Deputy Commissioner (OEP) for a decision as to whether the extension is to be granted.  If the extension is granted, the Deputy Commissioner (OEP) will sign the file note and arrange for it to be added to the casefile.

All extensions granted under section 223(1) are advertised in the Australian Official Journal of Patents (AOJP).  Therefore, where a section 223(1) extension is granted, the file must be referred to ERA for advertisement.

Amended Reasons

Amended Reason Date Amended
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