7.11.1.9 Extension of Time to Gain Acceptance

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
• ​​​​​​​7.11.1.10 Examination Report Delayed or Not Received
• 7.11.1.11 Co-pending Section 104 Application - Budapest Treaty Details
• 7.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Applicaiton
• 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

Related Chapters:

• 7.11.1.3.5 The Commissioner's Discretion

Where an applicant applies for an extension of time to gain acceptance of the patent application, the extension period should provide sufficient time for the delegate to consider the section 223 request (and where necessary time for advertising and allowance the extension), in addition to sufficient time for the examiner to consider any response or proposed amendments.

When considering the time required to gain acceptance, the applicant should take into account that an extension of more than 3 months will need to be advertised for a period of 2 months for opposition purposes.  The examiner will not consider any response to an examination report during this period.  The applicant should also consider the nature of any outstanding objections and whether these can be overcome at the first attempt.  If a further examination report is issued additional time will be required to gain acceptance.

As a general guideline, if advertisement of the extension is necessary, and assuming that the request is accompanied by satisfactory reasons, the applicant should request an extension to a date which is at least five months from the date of filing the request under section 223.  

If insufficient time has been asked for, the applicant can amend the extension request to reflect the new "end date" and pay any additional monthly fees.  This must be done before any possible advertisement.  If a request to amend the extension period is received after advertisement, then a further advertisement is required and potentially more fees paid.  

Failure to specify sufficient time in which to gain acceptance may cause the extension request to be refused (see 7.11.1.3.5 The Commissioner's Discretion under “Lack of Purpose”), or if granted, the patent application will immediately lapse as acceptance failed to occur within the extended period.

Where the acceptance date passes pending restoration of a lapsed application

Where an application lapses after the first examination report has issued, but before the application is accepted, the time for acceptance may expire before the application is restored.  In such cases, the applicant will need to allow sufficient time in their extension request not only to address the reasons for lapsing, but also sufficient time to gain acceptance.  

The "stopped clock" ruling in Ferplas Industries Ltd's Application (1979) 14 AOJP 1185 does not apply to the Patents Act 1990 - see G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28.