Limitations of Extension of Time Provisions

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As some of you may know, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), which took effect on 15 April 2013, introduced a number of significant changes, including a higher inventive step threshold and more stringent written description and support requirements.

To enjoy the more lenient provisions of the old (“Pre Raising the Bar”) Act, many patent applicants requested examination of their applications before the new Raising the Bar Act took effect on 15 April 2013.

Nevertheless, some applicants inadvertently failed to request examination before 15 April 2013 (e.g. because of an error or omission by the person concerned or his or her attorney), and subsequently applied for extensions of time to have their requests for examination filed after the commencement of the Raising the Bar Act treated as if they were filed before that date.

In Sunesis Pharmaceuticals Inc v Commissioner of Patents, which issued on 13 March 2015, the Full Federal Court has made it clear that section 223(2) of the Patents Act 1990 (Cth), which allows the Commissioner of Patents to grant an extension of time to complete a relevant act that is required to be done within a certain time, cannot be used to delay the effects of the commencement of legislative changes (see also Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. in this regard). Specifically, the Court found that section 223 acts, as the provision suggests, only to extend the time within which a relevant act can be done and does not operate to back date the relevant act.

In support of the findings of the Administrative Appeals Tribunal, from which the decision was appealed, the Court stated at [34]:

“In the present case, the application for examination could be made before or after 15 April [2013]. Before 15 April 2013 the [old] Act applied, because the Amendment [Raising the Bar] Act did not commence until that date. After 15 April 2013, including on 15 May 2013, the Amendment [Raising the Bar] Act applied. An extension of time in which to make the application for examination of the patent application does not back date the request for examination, it extends the time in which an application can be made. Section 223(2) of the Act cannot prevent “the Sword of Damocles” from falling on that date.”

The patent applicants have confirmed that they will not appeal the Court’s decision.

As a result, applicants that filed a request for examination together with a request for a section 223 extension of time on or after 15 April 2013 will have their applications examined under the Raising the Bar Act.

This decision is highly relevant to patent applicants as it makes it clear that, if an important deadline for taking steps under outgoing legislation is erroneously missed, it will not be possible to use section 223(2) to extend the deadline and the applicant will be subject to the new legislation.

Please don’t hesitate to contact us if you have any questions on the above.

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