For an extension to be granted under section 223(2)(a) there must be an error or omission and a causal connection between the error or omission and the relevant act that is required to be done within a particular time (Kimberly-Clark Ltd v. Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569).

Error or Omission

The failure to do the act or take the step, cannot itself be the error or omission by which the failure occurred (Kimberly-Clark Ltd v. Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569).

Although there is no clear or complete meaning for the words "error or omission" a distinction should be drawn between:

errors or omissions affecting the carrying out of the party’s intentions; and
the consequences of deliberate decision (Total Peripherals Pty Ltd v IBM & Commissioner of Patents [1998] AATA 784).

The definition of an error or omission was provided by Jenkinson J in Kimberly-Clark 13 IPR 569 in the context of section 160 of the Patents Act 1952, the equivalent of section 223:

"It is in my opinion difficult to suppose that only the inadvertence and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160 (1). Further, the word 'error' is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slip. …"

"I do not think that the conclusion I have reached reduces s 160(2)(a) to a mere general power of extension. By no means every judgement by "the person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness of error."

This definition was further considered in G S Technology Pty Limited v Commissioner of Patents [2004] FCA 1017 and G S Technology Pty Limited and Commissioner of Patents and Anor [2004] AATA 1391.

“Most errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence. Where such errors and omissions are made against a clearly demonstrated desire to maintain the application (and thus not have it lapse), and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt, as is the case here, the considerations in favour of an extension seem to me to be quite persuasive.”

“The observations of Jenkinson J in Kimberly-Clark specifically note that an extension can occur with or without moral fault on the part of the agent.”

“Assessing the conduct and state of mind of a person who is not a patent attorney against standards of what a competent attorney would have known, or would have done, to determine whether a discretion should be exercised, is wrong in principle.”

“There cannot be a difference between a sophisticated system for alerting a patentee to a time limit for payment which fails because of some programming error and the failure of the more basic system of sticking a note on the wall.”

In New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd [2001] APO 48, a Deputy Commissioner concluded that it was not appropriate in all the circumstances to visit the consequences of the actions of the attorney on his client because the client would not have been aware of the situation.

It is clear from Kimberly-Clark that an error or omission involves some type of flawed mental function in carrying out of a party’s intentions and does not have to be "accidental due to an inadvertent source". Errors or omissions resulting from faulty reflection, deliberation or mistaken judgment all fall within the scope of section 223.

In Total Peripherals Pty Ltd and Commissioner of Patents and International Business Machine Corporation [1998] AATA 784, the Tribunal found that "there has not been a failure to act by Mr Holcombe but rather, on review, a flaw in his mental function in carrying out his intentions, which is an error made by him". The Tribunal was satisfied that there was "an unexpected failure of a servant to exercise due diligence when giving directions".

Error or omission may include a breakdown in procedure or a failure to exercise due diligence (Oz Technology v Boral Energy Ltd [1999] APO 18).

The error must be causally linked to the failure to do the relevant act

There must be a casual connection between the error or omission and the failure to do the relevant act that is required to be done within the prescribed time.

In the majority of cases, the applicants for an extension must demonstrate that they had an intention to do the relevant required act, and that an error or omission on their, or their agent's, behalf reasonably could be said to have caused the failure to complete the relevant act in the time prescribed (see Kimberly-Clark 13 IPR 569).

However, in some circumstances the error or omission may have led to a failure to form an intention to do the relevant act. Where an error or omission contributes to cause the failure to perform the relevant act, that is sufficient to satisfy the required causal connection (see Apotex Pty Limited and Commissioner of Patents and Les Laboratoires Servier (Party Joined) [2008] AATA 226 at [21]; Kimberly-Clark 13 IPR 569).

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023