7.11.1.3.4 Filing a Request under Subsection 223(2)

Also in this Chapter:

• 7.11.1.3.1 The Law
• 7.11.1.3.2 Subsection 223(2)(a) - Error or Omission
• 7.11.1.3.3 Section 223(2)(b) - Circumstances Beyond Control
• 7.11.1.3.5 The Commissioner's Discretion​​​​​​​

Key Legislation:

Patents Act:

• s223 Extensions of Time

Patents Regulations:

• reg 22.2C Failure to pay: certain other filing fees etc
• reg 22.2F Consequence if Commissioner does not invite payment
• reg 22.11 Extension of time
• Schedule 7 Fees

Related Chapters:

• 5.6.2.4 Payment of fees
• 7.11.1.5 Common Deficiencies in Requests under Section

In this topic:

Overview

The Declaration

The Fee

Common deficiencies in the request​​​​​​​

Overview

An applicant seeking an extension of time under section 223(2) must:

• file a request for an extension of time in the approved form (available on the IP Australia website);
• file a declaration setting out the grounds on which the application is made;
• pay the fee for requesting the extension.

The declaration and fee are discussed further below.

The Declaration

The approved form of the request under section 223 contains the form for making a declaration under the Patents Act.  The person making the declaration must sign it.  

In the declaration, the applicant for extension of time needs to provide a full and frank disclosure of all the surrounding circumstances that led to the relevant act not being done in time as a result of an error or omission or circumstances beyond the control of the person concerned.

For an extension to be granted under section 223(2)(a) – error or omission - the declaration must establish that an error or omission occurred, which contributed to cause the failure to perform the relevant act.  The declaration should identify the error or omission and explain the circumstances or sequence of events that led to the relevant act not being done in the time required by the legislation, thereby identifying the causal connection between the error or omission and the failure to do the act within the prescribed time.  Note that the failure to do the relevant act cannot itself be the error or omission by which the failure occurred (Kimberly-Clark Ltd v. Commissioner and Minnesota Mining and Manufacturing Co 13 IPR 569).

The provision of section 223(2)(b) – circumstances beyond the control of the person concerned - has been interpreted by the courts to be, in effect, a “force majeure” provision where the circumstances are beyond the control of the person and could not have been avoided by that person’s exercise of due care.  Therefore, the declaration should set out the circumstances that prevented the applicant from performing the relevant act in the time provided by the legislation.

Where it is not possible for the applicant to file the declaration with the application form, the declaration should be filed as soon as practicable thereafter.  A delay in filing the declaration is a factor the Commissioner needs to consider when exercising discretion on the application.  In fact, given the provisions of reg 22.11(1), the application under section 223 is not made until such time as the declaration is filed.  

Where a declaration is not filed with the application, the Commissioner will allow 2 months for a party to file their declaration.  If no declaration is filed within this time, the extension under section 223 may be refused unless the person requests a hearing.  Any declaration received before the hearing will be considered as quickly as possible, with the hearing being cancelled if it is no longer necessary.

The Fee

Fee items 226 to 227 of Schedule 7 of the regulations indicate the fees payable for requesting an extension of time under section 223(2).  The fee payable is determined by the length of the extension requested, not by the date on which the extension is granted or refused.

Fee items 226 to 227 specifies fees "on filing an application", and so the appropriate fees as calculable at that time should accompany the application.  Under reg 22.2C, if the section 223 fees are not paid when the application is filed, an ITP (invitation to pay) will issue.  Failure to issue the notice within time will enliven the provisions of reg 22.2F (see 5.6.2.4 Payment of fees for further information).

Regarding the potential for refunds of section 223 fees, see 5.6.2.4 Payment of fees for a discussion of the issues.  

If an extension is opposed and the relevant act has not been done, the operation of regulation 22.11(1A) and (1B) affects the fees payable under item 226.

Common deficiencies in the request

Where a request under section 223 is deficient, a further request and/or declaration may be required.  

An indication of common deficiencies to be avoided in section 223 requests is provided at 7.11.1.5 Common Deficiencies in Requests under Section 223(2) or (2A).