Missing a patent date can be fatal for a patent owner because patent rights may lapse. However, unlike the standing up of a person, the relationship between a lapsed patent and the patent owner can be restored.
The Australian Patents Act and Patent Regulations require many actions to be performed within prescribed time frames to avoid lapsing. For example, to maintain a patent or patent application in force, a yearly renewal fee is required to be paid on the anniversary of the filing date starting from the fourth year. Similarly, and by way of example, a patent applicant has a period of two months from issuance of a direction to request examination within which to file a request for examination.
If these time frames are inadvertently missed, the consequences mean that a patent or patent application lapses and the patent cannot be enforced. It may however be possible under certain circumstances to extend the time to allow late completion of an action such as payment of a renewal fee or filing of a request for examination.
For late payment of a patent renewal fee, a grace period of six months is provided (refer Reg. 13.3(1A)) hence a renewal fee can be paid up to six months from the relevant anniversary accompanied with monthly late fees.
Where grace periods do not apply, applications for extension of time to restore a lapsed patent can be made under Section 223 of the Australian Patents Act. It is a requirement when applying for an extension of time, to file a Statutory Declaration, the purpose of which is to particularise the grounds for the extension. From decided case law, the Statutory Declaration in support of a request for extension under Section 223 must establish the following:
- that it was always the applicant’s intention to perform the particular action in relation to the application at or before the due date for performing the action; and
- that because of circumstances beyond the control of the applicant, or because of an error, the particular action was not performed by the prescribed deadline.
Errors outlined in decided cases, which have been shown to support revival actions, generally recognise human errors that can arise in administration of patents that have multiple and often parallel deadlines.
An application for extension of time must also be accompanied by an extension fee payment based on an official fee on a monthly basis. At the same time the omitted action should be taken and any outstanding official fees paid.
While missing a patent date can lead to lapsing of a patent right, the patent right can be restored by taking immediate action to extend the time for doing the action.
If you have any questions or concerns about patent deadlines, grace periods and renewals, feel free to contact Baxter IP’s patent attorneys.