The management of patent deadlines is a persistent consideration in the IP world, with the consequences of missing one potentially being the irreversible loss of patent rights. Fortunately, New Zealand legislation provides for the extension of some of these deadlines (including acceptance, but excluding divisional deadlines). In our recent experience, IPONZ has been generally understanding in considering and granting these extensions of time. However, it is important for both Attorneys and Applicants to understand the statutory basis by which these decisions are made, and how best to approach requesting these extensions of time.
Introduction
It is generally accepted that deadlines are important tools in our commercial world. Whether we like them or not, deadlines drive both our professional and personal decisions, and assist businesses in allocating appropriate resources at opportune times.
However, to err is human, and circumstances may arise which can result in missed deadlines. The consequences of missed deadlines can be particularly problematic in the patent world, potentially leading to the irreversible loss of patent rights.
Fortunately, there exist provisions in both Australian and New Zealand to request an extension of time for doing certain actions if the deadline to do that action has passed.
This article relates particularly to New Zealand extensions of time in accordance with section 231 of New Zealand’s Patents Act 2013, and continues in-part from my Colleagues’ article in relation to Australian extensions of time.
Section 231: Commissioner may extend time limits for certain filing requirements or for delivery failures
Section 231 of New Zealand’s Patents Act 2013 outlines the rules under which an extension of time may be requested, considered, and allowed/refused:
231 Commissioner may extend time limits for certain filing requirements or for delivery failures
(1) The Commissioner may, on application by any person under section 232 or at the Commissioner’s own discretion, extend—
(a) the time limit under section 37(2)(a) or (b) (which relates to the time limit for the filing of a complete specification) or section 53 (which relates to the filing of a convention application); or
(b) the time within which anything must be done under this Act or the regulations if that thing is not or will not be done in time because of a failure or delay of the delivery method.
(2) The Commissioner may grant the extension even if the time has expired for doing the thing.
In sum, subsections 1 and 2 indicate the circumstances under which any person (including the Commissioner) may request the extension of time. The Commissioner may grant the extension even if the relevant deadline has passed. The request must be accompanied with an explanation of any reasons for failing to comply with the original time limit, and optionally (although, in practice, conventionally) evidence in support of the request.[1]
The contents of these subsections are largely unsurprising and are comparable to Australian practice. However, subsections 3–4 differ significantly in both language and potential application, as discussed below.
Subsection (3)
(3) However, the Commissioner must refuse to grant the extension if in his or her opinion—
(a) the applicant or the applicant’s agent has not allowed a reasonable margin of time for the delivery of any documents or information relating to the matter for which the application for the extension is made; or
(b) the applicant or the applicant’s agent has in any other way failed to act with due diligence and prudence on the matter; or
(c) there has been undue delay in applying for the extension of time or in prosecuting the application.
This subsection notably relates to three subjective negative qualifiers, dependent on the Commissioner’s interpretation of the circumstances of the missed deadline.
On reviewing the Official documentation and published case law (which has been quite limited), we have been unable to find a conclusive definition of what would constitute a “reasonable margin of time” or an “undue delay”. Accordingly, it appears that the Commissioner has the power to determine the application of these terms, and the Applicant or relevant person is provided minimal basis on which to challenge the Commissioner’s decision.
Our best understanding of “due diligence and prudence” is found in IPONZ’s commentary to the PCT Union,[2] in which the term is defined as the “rightful, earnest and constant effort and caution with regard to practical matters”. While this provides some direction, we again note that there is no indication or example of what a “rightful” or “earnest” effort comprises, and hence the power remains with the Commissioner.
(It is noted that these comments were made with regards to the old Patents Act 1953, however the language of the relevant subsection[3] was not significantly amended in the transition to the new Patents Act 2013.)
Subsection (4)
(4) The Commissioner may grant the extension on any terms or conditions he or she thinks fit.
This subsection is relatively straightforward and operates as a catch-all for the reasonable reasons in which an extension of time should be granted (subject to the above qualifiers) – however, it is noted that the wording implicitly allows the Commissioner to also deny the extension for any reason they see fit.
It may also surprise some practitioners and patent applicants to note that section 231 fails to include an “error or omission” or an “unintentionality” clause – however, in practice, this reasoning may be considered in subsection 4 (if the Commissioner wishes to apply it in this manner).
Application of Section 231
While the language of section 231(3)–(4) appears to be one-sided in permitting the Commissioner to allow or deny extensions of time at will (particularly in comparison to Australian practice), we have found in recent experience that IPONZ has been rather lenient in considering the above-discussed factors under section 231, such that we have been receiving decisions similar to those issued by the Australian Patent Office.
This may be due to New Zealand’s status as a strong net importer of IP, and as such New Zealand has a vested interest in being as lenient as reasonably possible with respect to the granting of a requested extension of time. Literal or undue adherence to the strict wording of section 231 effectively discourages foreign investment in New Zealand’s patent system – and as such, some degree of purposive interpretation is expected, and generally delivered, on the part of IPONZ.
Summary
It is important for any practitioner or patent applicant to note the differences between Australian and New Zealand practice, and to tailor their request for an extension of time accordingly. In New Zealand, requests for an extension of time are available for some (not all) deadlines, and the focus of such a request should be on demonstrating “due diligence and prudence” in efforts to meet the original deadline. There should be less reliance on identifying an “error or omission” on the part of the Applicant or their agent (as is commonly the case in Australia).
Moreover, despite the subjective wording of the legislation and New Zealand’s vested interest in making its patent system as user-friendly as possible, we stress that extensions of time should only be relied upon as a last resort – the first option should always be to meet the original deadline.
[1] Patent Regulations 2014 (NZ) s 146(1).
[2] PCT Union, PCT/R/WG/4/1 ADD.1 to the World Intellectual Property Organization, Application of the Criteria of “Due Care” and “Unintentionality” under National Practice in Cases of Restoration of Rights: Replies Received in Response to Questionnaire, 19-23 May 2003 (http://www.wipo.int/meetings/en/details.jsp?meeting_id=4817).
[3] Patents Act 1953 (NZ) s 93A(3).