How long can you go?
Australian patent law provides reasonably generous provisions for extending deadlines in the event that a critical date is missed. In particular, if an applicant or patentee can show that the deadline was missed due to an error or omission or circumstances beyond their control, it may be possible to obtain an extension of time for completing the missed action.
The longest extension of time granted by the Australian Patent Office is 121 months (10 years and one month) for filing a request to extend the term of a pharmaceutical patent. Other patentees have recently tried to obtain extensions of 9 years and 11 months and 10 years and 4 months for filing requests to extend the term of pharmaceutical patents. However, these extension requests were refused by the Patent Office. One extension request was refused on the basis that the patentee did not provide evidence to show that it had an intention to seek an extension of the term of the patent when the application was first due to be filed. The second extension request was refused on the basis that although there was clearly an error that thwarted the initial intention to file the extension of term request, this error was discovered within one month after the initial deadline had passed. However, once the initial error had been discovered, the patentee made a decision to not file an extension request. It was only until some 10 years later that the extension request was filed. This extension was refused on discretionary grounds.
Despite the Patent Office refusing these two lengthy extension requests, the Patent Office has demonstrated that it is willing to grant even quite lengthy extensions. In order to successfully obtain an extension of time, it is typically necessary to demonstrate that, at the time of the deadline, there was an intention to complete the missed action, that the action was not completed due to an error or omission or circumstances beyond your control and that, upon realising that the action was not completed, there was no undue delay in filing the application for extension of time. Many decisions issued by the Australian Patent Office emphasise the requirement for the person seeking the extension of time to provide a full and frank disclosure of all of the facts that led to the action being missed.