Flawed mental
function saves
the day in patent
opposition Inspire October 2020
In a recent Australian Patent Office decision 1 , an extension of time to
file a complete Australian patent application was allowed despite a third
party opposition. The delegate of the Commissioner of Patents accepted
that flawed mental function by the applicant in misunderstanding advice
provided by their patent attorney was the cause of missing the deadline.
10 Extensions of time to do certain
acts under the Patents Act 1990 are
generally available under s 223. The
extension of time typically requires
payment of fees, including any
fees that were not paid as a result
of the error, and evidence around
the facts in the form of a statutory
declaration. In most situations, where
the error lies with the applicant,
the Commissioner has discretion
in relation to allowance of the
extension of time. The extension
of time application, if allowed,
may then be opposed by a third
party – as happened in this case.
Background The applicant, via their patent
attorney, filed two provisional patent
applications, relating to a system
which provides digital receipts.
An international-type search was
carried out on the provisional
applications. The results of the
international-type search indicated
there may be an objection to the
The Evidence
Their misunderstanding
was the kind of flawed
mental function or
faulty reflection that
is recognised in the
cases as an error.
claims for lack of inventive step,
if a complete application were
ultimately filed and the application
examined. The applicant did not
instruct their patent attorney to
file a complete application – until
obtaining different advice from
another patent attorney – because
of their belief that it would not be
possible to obtain a commercially
useful patent in light of the results
of the international-type search.
Mark Johnson v Paul Weingarth, Spiro Rokos and Paul Scully-Power [2020] APO 32 (7 July 2020)
1
The applicants submitted that,
following a meeting with their patent
attorney at the relevant time, they
were of the view they would not
be able to obtain the grant of a
commercially useful patent. This
was due to an erroneous belief that
there was no ability to engage with
a patent examiner regarding the
relevance of prior art cited against
their application nor the ability to
make potential amendments to
the claims or submissions so as to
overcome the inventive step objection.
The opponent to the extension
of time argued that there was no
evidence that the patent attorney
did not inform the applicants that
there was an ability to amend the
specification, or any evidence
from the patent attorney at all. The
opponent also queried why, if the
patent attorney believed that the
application was futile, a reminder
regarding the complete application
was sent as the applicant asserted.