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