Dr Malcolm Lyons and Dr Craig Don Paul discuss the key aspects of Australia’s Extension of Time (EOT) rules, using two recent Australian Patent Office decisions that highlight key requirements for a successful EOT application.
There are many requirements to gain or maintain a patent, and certain requirements have a deadline for completion. For example, filing a standard patent application claiming priority from an earlier provisional patent application, paying a renewal fee, or even filing an application before expiration of the grace period (see article here), each of which has a deadline. Importantly, in some jurisdictions, where an action to be performed prior to a deadline is missed, it is possible to apply for an extension of time (EOT) to perform the missed action.
Australia is such a jurisdiction with comparatively liberal EOT legislation, which can remedy an error or omission by the applicant / patentee or their agent. An application for an EOT to remedy an error or omission must be accompanied by a declaration detailing the circumstance surrounding the error or omission. Balancing a need to act without undue delay once a missed action has been identified, the declaration may be filed up to two months after request by the patent office if the declaration was not filed with the EOT application.
Two relatively recent Australian Patent Office (APO) decisions, GloFish, LLC [2022] APO 52 (GloFish) and QIP Nominees Pty Ltd v CureVac AG [2022] APO 51 (CureVac), highlight the importance of two requirements for a successful EOT application of this nature: (i) a deadline must attach to an act that must be performed before that deadline, and failure to do so results in loss of rights; and (ii) a full and frank disclosure of the error or omission that caused the deadline to be missed.
(i) Deadline – GloFish
Under certain conditions, disclosure requirements relating to organisms may be satisfied by a deposit of the organism at an International Depositary Authority, e.g., the National Measurement Institute (NMI) in Australia, American Type Culture Collection (ATCC) in the USA, or European Collection of Authenticated Cell Cultures (ECACC) in Europe. To rely on the deposit, the deposit must be made before the earliest priority date of the application and the details of the deposit must be present in the specification when the application is published.
GloFish, LLC (GloFish) filed a US provisional application on 13 November 2018 and a PCT application on 13 November 2019 claiming priority from the provisional application. The applications were directed to transgenic fish that fluoresce different colours. Sperm samples of the various coloured GloFish were deposited at the ATCC on 20 March 2020, i.e. after the PCT filing date. GloFish filed EOT applications to satisfy the deposit requirements.
The key questions that the Delegate of the Commissioner of Patents (Delegate) intended to consider were statutory (was the act required to be done within a certain time) and factual (what was the error or omission that caused the missed deadline). The Delegate found that there was no statutory basis for the EOT, so factual evidence was not considered.
GloFish submitted that because making an organism deposit was not excluded by the regulations, it must be included (see [38] and [39]). In contrast, the Delegate reasoned that:
Until the filing is done (i.e. during the entirety of the purported implied period) there is no requirement to make any deposit (at [60])
and
The disclosure requirements are only satisfied if a certain state of affairs was in place at a certain time… There is no “within a certain time” to enliven s223 [the legislative EOT provision]. (original emphasis, at [61])
The Delegate also discussed the policy principles relating to organism deposits (at [68] to [73]), noting that because the deposit of organisms occurred after filing, it was:
equivalent to filing the application before the [gene] sequencing had taken place and then later filing a sequence listing once the sequencing had been completed (at [71]).
The decision emphasised the need to consider carefully whether the EOT application is based on a mandatory action with an attached deadline, or in the language of the legislation, ‘a relevant act that is required to be done within a certain time’.
(ii) Disclosure – CureVac
A notice of opposition may be filed by any person who wishes to oppose the grant of a patent on an accepted Australian patent application. The notice of opposition must be filed within three months of the date of publication of acceptance.
An application in the name CureVac AG (CureVac) was advertised as accepted on 21 May 2022. Thus, the deadline to file a notice of opposition expired 21 August 2022. QIP Nominees Pty Ltd (QIP) filed a notice of opposition on 27 August 2022 along with an EOT application for one month to file the notice of opposition. Declarations supporting the EOT request were filed in September and November 2022.
The Delegate considered five factors when deciding if discretion should be provided and the EOT application allowed. However, the decision turned on the first factor considered – “whether the Commissioner is satisfied that a proper case has been made out justifying an extension”. In other words, whether the EOT applicant has made a full and frank disclosure of the circumstances surrounding the error or omission that the EOT aims to remedy (discussed at [35] to [45]).
QIP, acting on behalf of a third party who wanted to remain anonymous, submitted evidence confirming a desire to pursue an opposition via an EOT application. However, CureVac asserted that the evidence provided was not a full and frank disclosure. The Delegate agreed stating:
I am left with many questions … relevant to an understanding of how the failure to file the notice of opposition came about and to evaluating the reasonableness of the conduct” (emphasis added, at [41]).
Even though the third party wished to remain anonymous, the Delegate noted that it should still have been possible to provide a full and frank disclosure without divulging any information identifying the third party (at [44]).
The decision reiterated the need when applying for EOT for a full and frank disclosure of the error or omission causing an action to which a deadline attaches to be missed.
Key requirements and practice tips
- EOT is discretionary
- EOT will be granted only for missed acts that are mandatory and have a deadline attached, expiry of which without performing the act will result in loss of rights
- When providing evidence of error or omission in support of an EOT application, be as thorough as possible – declarations should be a full and frank disclosure of the error or omission
- Ensure that appropriate controls are in place to ensure reminders are received and deadlines are not missed
- especially true if requesting no reminders from attorneys to minimise costs
- can be used as evidence that error/omission was not deliberate
