Extensions of time under section 223(2)(a) and 2(b) cannot properly be dealt with in the absence of a full knowledge of the source law. The law has been developed by the Courts and the AAT in relation to section 223 of the Patents Act 1990 and the similar section 160 of the Patents Act 1952.

The most relevant cases for section 223(2)

1. Scaniainventor v Commissioner of Patents [1981] FCA 84 - Applicability of section 160 generally, and in particular to time for lodging Convention applications; general analysis of the section; meaning of "act or step", "certain time", "required to be done or taken" etc.

2. APM Ltd v CIL Inc [1981] HCA 64 - Similar to 1, above

3. Lehtovaara v A/Deputy Commissioner [1981] FCA 218 - Applicability of section 160 to time for acceptance.

4. Board of Control of Michigan Technological University v Deputy Commissioner of Patents

a. High Court - (1982) 40 ALR 577, (1982) AIPC 90-005, (1982) 52 AOJP 1998

b. Federal Court - [1981] FCA 39; (1981) 34 ALR 529

c. AAT - (1982) 52 AOJP 1992

Applicability of section 160 to extend the time for applying for restoration pursuant to reg 7B. Public interest, circumstances beyond the control and undue delay considered.

5. Stibbard v. Commissioner 7 IPR 337, (1985) AIPC 90-316 (AAT) - Applicability of section 160 where there is no "certain time", e.g. lodgement of a complete application where no earlier priority rights exist.

6. Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks [1987] FCA 22; 7 IPR 551 - Applicability of section 131 of the Trade Marks Act 1955 to time for lodging notice of opposition; circumstances beyond control considered.

7. Danby Pty Ltd v Commissioner and Rib Loc Group Ltd [1988] FCA 43; 12 IPR 151 - Application of section 160 to time for lodging notice of opposition.

8. Weir Pumps Ltd v. Commissioner and Stork Pompen BV 13 IPR 163, (1989) AIPC 90-537 (AAT) - Application of section 160 to time for lodging notice of opposition; error or omission considered.

9. Kimberly-Clark Ltd v. Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569 - Applicability of section 160 to time for lodging notice of opposition; error and omission discussed fully; chain of causation in error or omission discussed.

10. Abbott and Lamb Pty Ltd v Registrar of Trade Marks [1991] AATA 441 - Applicability of section 131 of the Trade Marks Act 1955 to time for lodging notice of opposition; circumstances beyond control considered.

11. Jiejing Pty Ltd v Commissioner of Patents and Ron Thomas and Allan Garnham [1995] AATA 100 - Application of section 223 to the time for acceptance; whether decision to extend could be revoked, nature of error or omission under section 223(1) and 223(2)(a), and whether circumstances beyond control considered.

12. Solar Mesh Pty Ltd v Commissioner of Patents [1995] AATA 101 - Application of section 223 to the time for serving a statement of grounds and particulars; nature of error or omission under sub-section 223(2), circumstances beyond control considered.

13. Hugh Macdonald Reilly v Commissioner of Patents [1996] AATA 130; 36 IPR 314 - Application of section 223 to paying a renewal fee due when the patentee was bankrupt; consideration of who was responsible for paying the fee, and the role and powers of the trustee in bankruptcy; bankruptcy not a circumstance beyond control for the purpose of section 223(2)(b).

14. Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832; 36 IPR 470 - Delays in applying for an extension of time, or in filing relevant material in support, discussed in relation to the public interest.

15. Total Peripherals Pty Ltd v Commissioner of Patents and International Business Machines Corporation, [1998] AATA 784 - Found that an error or omission may exist in a "flaw in mental function" where well-established systems or routines were not followed (AAT)

16. Lazer Safe Pty Ltd v Commissioner of Patents [2001] AATA 967 - Cessation of patent due to non-payment of renewal fee. Whether jurisdiction to grant extension of time for payment of renewal fee due to error or omission after anniversary date.

17. GS Technology Pty Ltd v Commissioner of Patents [2004] FCA 1017 - Application of section 223 for an extension of time to pay a continuation fee. Errors of judgment by agents and attorneys such as "lapses of memory" or "accidental slips" (bizarre or as little to be anticipated as those errors might be) are within the section.

18. Apotex Pty Limited v Commissioner of Patents and Les Laboratoires Servier (Party Joined) [2008] AATA 226 - Where an error precludes the forming of an intention to do the relevant act, it is sufficient for the purposes of section 223 if the error contributed to cause the failure to perform the act.

19. Aspen Pharma Pty Ltd and Ors v Commissioner of Patents and H Lundbeck (Joined Party) [2012] AATA 851 – The Tribunal found that section 223 is available to extend the time for making a request under section 70 within the term of the patent. An earlier, timely application under section 70 was found by the Full Federal Court not to be based on the first inclusion in the ARTG of a relevant product. As a consequence the extension of term granted on this basis was invalid. Lundbeck awaited the final outcome of Federal Court proceedings before filing a second request under section 70 based on the earliest listing. The tribunal found that Lundbeck’s delay in making the second request was not unreasonable in the circumstances, and affirmed the delegate’s decision to grant an extension of 11 years to file a request under section 70. The case proceeded on appeal to the Federal Court and then the High Court where the first instance decision was confirmed (Alphapharm Pty Ltd v H Lundbeck A/S [2014] HCA 42).

20. Merck Sharp & Dohme Corp v Commissioner of Patents [2013] AATA 71 – Where the patentee was aware of the deadline for filing an application for an extension of term of the patent, in the absence of a sufficient disclosure of the circumstances in which the patentee failed to file the application, or a reasonable explanation for the failure to take action in the interim, an extension of close to 10 years to file a request under section 70 was refused. In these circumstances, the mere absence of any detriment to any other person is not sufficient to warrant the grant of an extension.

21. Sunesis Pharmaceuticals Inc v Commissioner of Patents [2015] FCAFC 29 – A full Federal Court confirmed that section 223(2) of the Patents Act, which allows the Commissioner of Patents to grant an extension of time to complete a required act, cannot be used to delay the effects of the commencement of legislative amendments. The Court found that section 223 does not operate to back date a required act. In this sense as the provision suggests, section 223 operates only to extend the time in which a required act can be done.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023