A 12 month “grace period” is provided in Australian Patent law, which allows any information made publicly available, with or without the consent of the applicant, the patentee, or the inventor, within 12 months before the effective filing date of a complete application to be disregarded for assessment of novelty or inventive/innovative step.1
Further, section 223 of the Patents Act 1990 (Cth) permits deadlines to do certain acts to be extended in particular circumstances, such as when an error or omission has occurred, or when circumstances beyond a person’s control have prevented them from meeting a deadline.2 Notably, it is also possible to obtain an extension to the grace period in circumstances when an error or omission, or circumstances beyond a person’s control, have led to certain information becoming publicly available, the information being otherwise relevant for novelty or inventive/innovative step assessment.3 The ability to obtain such an extension was confirmed in a recent Australian Patent Office decision involving Amicus Therapeutics, Inc.4
Thus, if at any point after the filing of a patent application, including after grant/certification, the applicant/patentee becomes aware of a prior disclosure that occurred more than 12 months prior to the effective filing date of the application, the applicant/patentee may apply for an extension to the grace period, assuming the criteria for obtaining an extension under s223 of the Patents Act 1990 (Cth) can be met, in order to have the prior disclosure disregarded for assessment of novelty or inventive/innovative step.
Requirements for obtaining an extension
When an extension is being sought due to an error or omission, there must be a causal connection between the error or omission and the relevant act that was required to be done within a particular time.5 It must also be established that the applicant had an intention to do the relevant act within the prescribed time. The required causal connection can be satisfied, for example, if the error or omission contributed to the failure to form the intention to do the relevant act.6 Moreover, an unexplained delay in filing the request for an extension, after the applicant/patentee has become aware of the error of omission, may result in an unfavourable outcome.
These requirements can be particularly difficult to satisfy when the extension being sought is for the grace period. For example, if the information that the applicant/patentee is seeking to include within the grace period by extending it is prior disclosure by the applicant/patentee themselves, through prior publication or prior use, it would be necessary to establish the following:
- There was a genuine error or omission that resulted in the complete patent application not being filed within 12 months from the true earliest prior disclosure.
- The applicant/patentee was aware of the grace period provision prior to the date that is 12 months from the true earliest prior disclosure. However, if the error or omission relates to the applicant/patentee being unaware of the grace period provision, it may not be necessary to establish this requirement.
- The applicant/patentee had intended to utilise the grace period provision by filing the patent application within 12 months from what the applicant/patentee had previously believed to be the earliest prior disclosure (if any) prior to becoming aware of an even earlier prior disclosure7; or the applicant/patentee had intended to file the patent application prior to disclosing the invention or any information relating to the invention.
- The abovementioned intention to file the patent application was formed prior to the date that is 12 months from the earliest prior disclosure.
The above requirements relate to scenarios where the extension is being sought due to an error or omission. However, an extension for the grace period can also be obtained if circumstances beyond the control of the applicant/patentee prevented them from filing a patent application within 12 months from the earliest prior disclosure. Ultimately, the particular requirements for obtaining an extension for the grace period would depend on the individual circumstances that led to the patent application not being filed within 12 months from the earliest prior disclosure.
Although obtaining an extension of time for the grace period does not change the effective filing date of the patent (“date of patent”), it does change the date from which the grace period is applied for the application/patent for which the extension is requested, as well as for any divisional applications/patents. Thus, only one extension request would be required for all related applications/patents in a single patent family.
The extension to the grace period, if obtained, can be a useful tool to overcome the applicant’s/patentee’s own prior disclosure or prior use which had occurred more than 12 months prior to the effective filing date of the application/patent. However, the validity of such extensions has not been considered by a Court and remains uncertain, despite the Patent Office accepting the practice as permissible under the current law.
1 Patents Act 1990 (Cth) s 24(1)
2 Patents Act 1990 (Cth) s 223(2)
3 Ashmont Holdings Limited v American Home Products and Nature Vet Pty Limited  APO 24
4 Amicus Therapeutics, Inc.  APO 4
5 Kimberly-Clark Ltd v Commissioner of Patents (No 3)  FCA 421
6 Re Apotex Pty Limited and Commissioner of Patents  AATA 226 at 
7 Amicus Therapeutics, Inc.  APO 4 at