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.




as soon as the error was realised
the applicant took steps quickly to
cause an application to be filed.

Best practice for
Extensions of Time
This decision is a timely reminder
that when an action is missed,
applicants seeking an extension
of time under s 223 should:
> Act quickly in carrying out the
action and filing the extension
of time request (a declaration
setting out the fact scenario
may be supplied later).

> Set out the fact scenario in the
declaration such that it clearly
addresses: that it was always the
applicant’s intention to carry out
the action, how the error occurred,
and what steps were taken
once the error was discovered.

Extensions of time are
generally not allowable if
a commercial or financial
decision was made not
to take the action. It is also
worth bearing in mind that
the extension of time may
be opposed.

If you have any questions
around extensions of time please
do not hesitate to contact us.

Inspire October 2020
As the delegate noted, the
opponent attempted to advance
the possibility that the applicants
made a commercial decision not to
file an application and subsequently
changed their minds. If so, the
extension of time would likely
not have been allowed. However,
the delegate was of the view
that this was not supported by
the applicant’s evidence, or any
evidence from the opponent.

The delegate was satisfied that
the applicants had an intention to
file a complete patent application
as a means to obtain patent
protection in Australia and that
they had misunderstood the advice
provided by their patent attorney.

Their misunderstanding was the
kind of flawed mental function or
faulty reflection that is recognised
in the cases as an error. Further,
11 Mark Williams | Special Counsel
BCSE(Hons) MIP FIPTA
mark.williams@pof.com.au