[The IPKat] Australia's extension of time provisions for patents have their limits (and may soon have more)
Claire Gregg
Australia's extension of time provisions for patents have their limits (and may soon have more)
Dr Claire Gregg Wednesday, March 25, 2026 - Australia, Claire Gregg, EOT, extensions of time, IP Australia, OzKat, public consultation
Australia is generally considered to have fair and equitable extension of time (EOT) provisions for patents, which afford the Commissioner of Patents the power to grant extensions to complete a relevant act that could not be completed within the required time due to an error or omission by, for example, the applicant, their attorneys, or the Australian Patent Office (APO). However, a recent APO decision highlights the importance of establishing that an error or omission has actually occurred, and that a deliberate decision that will inevitably result in failure to complete a relevant act is unlikely to be considered an error or omission in the sense contemplated by the provisions.
IP Australia is also conducting a public consultation that, among other things, seeks feedback on the provisions and whether reform is necessary.
EOT provisions
Under s 223 of the Patents Act 1990 (Cth), the Commissioner can grant an EOT for doing a "relevant act" that is required to be done within a certain time due to:
1. an error or omission by the APO or International Bureau;
2. an error or omission by the applicant or their attorney; or
3. circumstances beyond the control of the applicant or their attorney.
While the Commissioner must grant an EOT in circumstance (1), the power to grant an EOT in circumstances (2) and (3) is discretionary. Exercise of this discretion is subject to the applicant satisfying the Commissioner "… on the balance of probabilities, that the [applicant] took due care, as required in the circumstances, to ensure the doing of the act within that time". However, it is important to note this is not the same as the "despite due care" standard that makes it so difficult to obtain EOTs in Europe and some other jurisdictions.
Time limits that may be extended
A "relevant act" is defined as "an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications".
EOTs have been granted to complete actions such as entering the national phase, requesting examination, gaining acceptance, filing a divisional application, paying official fees (including renewal fees outside the six month grace period), relying on the grace period to file a complete application, and filing an application for patent term extension (PTE), among others.
|
|
|
Extension of time Kat |
Enlivening the EOT provisions
To enliven the EOT provisions due to an error or omission by the applicant or their attorneys – in addition to establishing that an error or omission has in fact occurred – several criteria must be established:
· a full and frank disclosure of the circumstances surrounding the relevant error or omission must be provided;
· a causal link between the error or omission and the failure to complete the relevant act by the deadline must be established;
· the applicant’s intention to meet the relevant deadline must be established (or an inability to form such intention due to the nature of the error or omission); and
· there must be no undue delay between identifying the error or omission and requesting the EOT.
Each criterion must be established in one or more declarations from a relevant person with direct knowledge of the circumstances surrounding the error or omission. These declarations can be filed within two months of the EOT request being filed (together with completion of the relevant act and payment of official extension fees).
Establishing an error or omission
A recent example where the applicant failed to establish that an error or omission occurred is MossHydro AS; Marine Harvest ASA [2025] APO 40, in which the applicants sought a 12 month EOT to pay acceptance fees (and intervening continuation fees).
In this case, the applicants had instructed their attorneys to "not pay the acceptance fees unless given explicit instructions". The applicants sought to identify as the relevant error the fact that the person responsible for instructing payment was laid off due to financial difficulties. However, the Hearing Officer did not consider this to be a relevant error or omission because: "The action of laying off employees responsible for IP matters due to financial stress …, while unfortunate, was a deliberate step and cannot be considered an error or omission".
In refusing to grant the EOT request, the Hearing Officer referred to an earlier APO decision in RxPrism Health System Pvt Ltd v Canva Pty Ltd [2023] APO 23, in which the Hearing Officer distinguished between "an error or omission that leads to the failure to perform the act and where the failure is a consequence of a deliberate decision". The Hearing Officer in that case considered that where inadequate systems or processes that will inevitably result in failure to perform a relevant act are deliberately implemented, the EOT provisions are unlikely to be enlivened.
Proposal to tighten EOT provisions
Currently, there is (quite rightly) no limit on the duration of an EOT, provided the relevant criteria are satisfied. In one example, the Commissioner granted a nearly 10-year EOT to file a PTE application (Alphapharm Pty Ltd v H Lundbeck A-S [2014] HCA 42). However, for any EOT exceeding three months, the Commissioner must advertise it for opposition purposes.
On 3 March 2026, IP Australia released a consultation paper on "Streamlining and simplifying IP Regulation", which includes several proposals for reform (discussed in more detail here). While not a formal proposal for reform at this stage, the consultation paper calls for comments the current EOT system, in particular whether it presents issues of excessive costs for applicants and/or uncertainty for third parties and, if so, possible solutions. Two suggested solutions in the paper are:
· permitting one automatic (paid) extension of time for short periods (e.g., up to 3 or 6 months) per action, before the relevant deadline has passed, without the need to file supporting declarations; and/or
· imposing a time limit (e.g., 3 months) after the deadline has passed for filing EOT requests.
In this OzKat's view, these suggestions are overly restrictive and detrimental to applicants, and it is likely that IP Australia will receive significant push-back on this issue. The deadline for making submissions is 2 April 2026. Stay tuned for further updates as this issue progresses.
Disclaimer
This email, including any attachments, is only for the intended addressee(s). It is confidential, subject to copyright, and may be the subject of legal or other privilege, none of which is waived or lost by reason of this transmission. If the receiver is not an intended addressee, please accept our apologies, notify us by return, delete all copies and perform no other act on the email. Unfortunately, we cannot warrant that the email has not been altered or corrupted during transmission. Also our network may delay or reject delivery of an email sent to us, so please ensure an acknowledgement of receipt is received if you wish to confirm delivery.