Missed the deadline to file a complete patent application in Australia or New Zealand? All may not be lost. Both the Australian and New Zealand Patents Acts allow for extensions of time to file complete applications to be granted under certain circumstances. Two recent decisions, discussed below, highlight the circumstances under which a complete application may be late-filed in each jurisdiction.
Extensions of time may also be available to complete various acts in each jurisdiction. Therefore, if you believe a deadline has been inadvertently missed, we recommend contacting us immediately to assess whether an extension of time may be available in the circumstances.
Late filing in Australia
Extensions of time
The Australian Patent Office has discretionary power to grant an extension of time to file a complete application where failure to meet the deadline is the result of an error or omission by (or circumstances beyond the control of) the person concerned, i.e., the applicant or their agent or attorney. The same extension of time provisions extend to various other acts not completed within the required time, including payment of renewal fees, filing a divisional application or requesting examination, among others.
Mark Johnson v Paul Weingarth, Spiro Rokos and Paul Scully-Power  APO 32
This Australian Patent Office decision concerned two related provisional applications, which the applicants did not complete within the required 12-month period based on an understanding of verbal advice from their Australian patent attorney that there was an insurmountable inventive step issue with the claims. Several months after the deadline to file a complete application had passed, the applicants received advice from a different attorney that it may be possible to overcome the inventive step issue. Thus, an extension of time of 19 months was requested to file the complete application.
Relevantly, the applicants were inexperienced with the patent system and relied heavily on the advice of their attorney. Thus, the Hearing Office considered it likely that the applicants misunderstood their initial attorney to be advising them not to file a complete application and that this misunderstanding directly resulted in the applicants deciding not to file a complete (PCT) application. Further, the evidence supported that it was the applicants' intention to file a PCT application as a means to obtain patent protection in Australia and that prompt action was taken to file a complete application in Australia after the applicants become aware of the error. Accordingly, the extension was granted by the Patent Office.
This decision highlights the key criteria for the Australian Patent Office to exercise its discretionary power to grant an extension of time due to an error or omission, namely:
- a full and frank disclosure of the circumstances surrounding the error/omission must be provided in the form of one or more declarations;
- a causal link between the error/omission and the failure to meet the relevant deadline must be established;
- the intention of the applicant to meet the relevant deadline must be established (or an inability to form such intention due to the nature of the error); and
- there must be no undue delay between identification of the error/omission and requesting the extension of time (and completing the relevant act).
Late filing in New Zealand
Extensions of time
The New Zealand Patent Office also has discretionary power to grant an extension of time to file a complete application or to complete an act that could not be completed within the required time due to a failure or delay of the delivery method (e.g., electronic filing or mailing of documents). The New Zealand Patents Act also includes provisions for restoring a void or abandoned patent application under certain circumstances.
Marley New Zealand Limited  NZIPOPAT 1
This New Zealand Patent Office decision also concerned two provisional applications, which the applicant did not complete within the required 12-month period. In this case, the applicant instructed their New Zealand patent attorney well before the deadline to file complete applications based on each provisional in Australia and New Zealand. The Australian complete applications were filed, but for reasons the attorney could not explain, the New Zealand complete applications were never filed. Some months after the deadline, the applicant queried the patent attorney about the New Zealand applications, at which time it was discovered that they had not been filed. Thus, extensions of time of 6 months were requested to file the complete applications.
In this case, the applicant's timeliness in instructing the attorney well before the deadline and in filing the extension requests (together with the complete applications) once the error was identified weighed in their favour. The Hearing Officer also considered favourably the experience, competence and conscientiousness of the attorney and assistant involved, neither of whom had previously failed to file a complete application in time. The firm had also done everything within reason to ensure that their employees would not make such a mistake (e.g., by maintaining adequate management/docketing systems). For these reasons, the extensions were granted.
This decision highlights some of the key considerations of the New Zealand Patent Office in deciding whether to exercise its discretionary power to grant an extension of time to file a complete application, namely:
- the applicant must allow a reasonable amount of time before the filing deadline for the complete application to be filed;
- the applicant or their agent must act with due diligence and prudence; and
- there must be no undue delay between identifying that the complete application was not filed and requesting the extension (or prosecuting the application in the case of failure/delay of delivery methods).
Further, in order to restore a void or abandoned application, the considerations in New Zealand are largely the same as those set out above for extensions of time in Australia.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.