7.12.3.1 Initial Processing

Also in this Chapter:

• 7.12.3.1 Initial Processing
• 7.12.3.2 Consideration of the Application
• 7.12.3.3 Grant of Application for Extension of Term
• ​​​​​​​​​​​​​​7.12.3.4 Refusal of Application for Extension of Term

Key Legislation:

Patents Act:

• s187 Registration of particulars of patents etc.  
• s191A Commissioner's power to rectify register  

Patents Regulations:

• reg 13.6 Time for payment of renewal fee for patent
• reg 22.10 Address for service

In this topic:

Application Made in the Name of the Patentee

Address for Service

Patent in Force

Payment of Fees

CEG will check that certain requirements have been met before forwarding an application for an extension of term to Examination Section CHEM 3.  These include:

Application Made in the Name of the Patentee

The application for an extension of term must be made by the patentee, i.e. the person currently entered in the Register as the grantee or proprietor of the patent.

If the application is made by a person who is not the patentee or entered in the Register as the proprietor, CeG will advise the applicant:

• to take appropriate action under sec 187 (to register an assignment) or sec 191A (to correct the Register); and
• that the extension cannot be processed until the action under sec 187 or sec 191A is finalised.

The applicant will be given a reasonable period, for example 2 months, in which to correct the deficiency. If no response is received, the application is taken not to have been made. This cannot be later rectified by amending the name of the applicant to be that of the patentee, unless there has been a clerical error or obvious mistake.

Address for Service

The patent attorney used by a patentee to prosecute an extension of term may be different from the attorney used to prosecute the patent application. However, there can be only one address for service for a patent. Where the address for service stated on the application for an extension of term is different from that on record, this will not be considered to be a notice under reg 22.10(2) to change the address for service. CEG will inform both patent attorneys of this fact and all correspondence relating to the extension of term will be sent to the official address for service.

Patent in Force

A patent must be in force when an application for an extension of term is made.  If the patent is not in force, CEG will advise the patentee that the patent has ceased and invite them to pay the appropriate renewal fee.  The patentee will be given a reasonable period, for example 2 months, in which to pay the fee. If no response is received, the application is taken not to have been made.

Where the term of a patent has expired before the application for an extension of term has been determined, then renewal fees for the twentieth and subsequent anniversaries are not due until 6 months after the extension of term is granted (reg 13.6(1A)).

Payment of Fees

If an application fee has not been paid, CEG will issue an invitation to pay the fee.  If the fee is not paid by the due date, the application is taken not to have been made.