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As demonstrated by the recent patent office decision Amicus Therapeutics, Inc. [2020] APO 4, despite the beneficial nature of extension of time provisions, it is imperative that a request for an extension of time is supported by a full and frank disclosure demonstrating that the applicant intended to perform the relevant act for which the extension is sought.

Alternatively, the request must demonstrate that a failure in routine activity prevented formation of the intention to perform the relevant act. 

The decision deals with the extension of time provisions of section 223(2)(a) of the Patents Act 1990. As noted by the Deputy Commissioner of Patents at [13], “[t]he statutory provision to extend time is beneficial in nature and should be applied beneficially”. In this case, an extension of time was requested to file a patent application within the grace period for filing a patent application following a self-disclosure as provided by section 24(1)(a) of the Patents Act 1990. Without the grace period, such a self-disclosure would render the disclosed subject matter not novel and therefore unpatentable. 

Intention is key

At [13], the Deputy Commissioner listed a useful summary of principles to apply when considering a request for an extension of time. Key amongst these, particularly for the present case, is the requirement that:

(iv) The applicants for an extension of time must demonstrate that they had an intention to do the relevant act within the time prescribed, and that an error or omission on their, or their agent’s, behalf reasonably could be said to have frustrated that intention. However, there will be exceptional circumstances where the relevant error precluded the formation of a specific intention. In such cases the required causal connection is satisfied if the error contributed to the failure to form the intention to perform the relevant act. (Emphasis added.)

Error or omission?

As set out at [25] and [26] of the decision, the applicant contended that the relevant error or omission was failure by its US patent attorney to make enquiries about the grace period in Australia following application of the US grace period provision, and that this failure prevented the applicant from filing the Australian application during the grace period. That is, the applicant said the error was that of its patent attorneys, and the error caused it not to form the intention to file the patent application within the grace period.

Deficiencies of the extension request

Unfortunately, the request for an extension of time was held to be deficient on two counts.

Firstly, as noted by the Deputy Commissioner at [20], “[n]o enquiry was made [by the applicant] at [the] time [the US provisional application was filed] as to whether the US provisional would also invoke the grace period provisions in Australia.” Then as noted at [27] and [28], at first instance the Delegate of the Commissioner of Patents did not accept that the applicant had intended to file the application in Australia. At [30], the Deputy Commissioner agreed.

Secondly, also at [30], the Deputy Commissioner agreed with the Delegate’s opinion at [27] that the applicant did not provide any reasons why the applicant’s US patent attorney was in any way expected or obliged to have enquired as to the grace period provisions in Australia. Therefore, failure to make such an enquiry was not an error that in turn could not have precluded the formation of a specific intention to file the application in Australia during the grace period.

Prior intent or benefit of hindsight?

The Deputy Commissioner stated (original emphasis) that: 

…the applicant has provided a chronology of the processes by which the failure to file the application in time came to occur, but little or no detail of the conduct, knowledge, beliefs and mental processes relevant to understanding how the failure occurred and to assess the reasonableness of such failure. Statements by the declarants to the extent that had they been aware of the requirements then steps would have been taken do not satisfy this requirement.

To paraphrase, the Deputy Commissioner held at [34] that the request for an extension of time was based on the applicant’s change of mind with the benefit of hindsight, rather than to remedy an error or omission that prevented a relevant act.

What you need to know

Despite the beneficial nature of the extension of time provisions, it is imperative that the request for an extension of time be supported by a full and frank disclosure demonstrating that the applicant intended to perform the relevant act, but an error or omission prevented that intention to be enacted or prevented formation of that intention. The request must not be based on hindsight that suggested an alternative or additional strategy. 

 

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