IPA patent 7.11-extensions-of-time-and-restoration-of-the-right-of-priority — IP Australia Patent Manual of Practice and Procedure – 7.11 Extensions of Time and Restoration of the Right of Priority

Also in this Chapter: 7.1 Role and Powers of the Commissioner in Hearings 7.2 Oppositions, Disputes and other proceedings-Procedural summaries 7.3 Directions 7.4 Opposition Documents, Requirements and Amendments 7.5 Evidence ​​​​​​​ 7.6 Production of Documents, Summonsing Witnesses 7.7 Withdrawal and Dismissal of Oppositions 7.8 Hearings and Decisions 7.9 Costs 7.10 The Register of Patents ​​​​​​​ 7.12 Extensions of Term of Standard Patents Relating to Pharmaceutical Substances 7.13 Orders for Inspection of non OPI Documents 7.14 Appeals ART, ADJR, The Courts 7.15 Computerised Decisions Sub-chapters: 7.11.1 Extensions of Time - Section 223 7.11.2 Extensions of Time - Reg 5.9 7.11.3 Restoration of the Right of Priority under the PCT Key Legislation: Patents Act: s223 Extensions of time Patents Regulations: reg 5.9 Extension of time for filing evidence reg 5.11 Statement of grounds and particulars reg 5.12 Practice and procedure reg 5.22 Commissioner may give directions reg 22.11 Extension of time reg 22.24 Practice and procedure other than for opposition proceedings Related Chapters: 7.2.8 Entitlement 7.3.1 Directions in Opposition Proceedings In this topic: Relevant Legislation The Act The Regulations Overview The relationship between regulation 5.9 and section 223 ​​​​​​​ The Act Section 223 Extensions of time The Regulations Reg 5.9 Extension of time for filing evidence Reg 5.22 Commissioner may give directions Reg 22.24 Practice and procedure other than for opposition proceedings Overview ​​​​​​​ The Patents Act and Regulations contain provisions allowing the Commissioner to extend the time for performing specific actions in certain circumstances. Where the time for performing an action is extendible under the legislation, the nature of the action will determine which provision applies. Section 223 and reg 5.9 are exclusively extension of time provisions. Extensions under these provisions are discussed more fully in the following sections. See 7.11.1 Extensions of Time - Section 223 and 7.11.2 Extensions of Time - Reg 5.9 . The more broadly applicable direction provisions of reg 5.12 and reg 5.22 may be used to extend time periods during procedural oppositions (see 7.3.1 Directions in Opposition Proceedings ). Similarly, reg 22.24 may be used to extend time periods where the Patents legislation authorises the Commissioner to hear and decide a matter that is not an opposition (e.g. in proceedings under sections 33, 34, 35, 36 see 7.2.8 Entitlement ). In its role as a Receiving Office or International Searching Authority (ISA), IP Australia considers applications under the PCT Rules to restore the right of priority where an international application is filed after the end of the normal 12-month priority period. See 7.11.3 Restoration of the Right of Priority under the PCT . The relationship between regulation 5.9 and section 223 Section 223 is universally applicable, except in respect of prescribed actions (see section 223(11) and reg 22.11 ). The prescribed actions that are excluded from the operation of section 223 are: any action in Chapter 5 of the Regulations, except the filing of a notice of opposition (under reg 5.4 or reg 5.10 ) or the filing of a Statement of Grounds and Particulars (under reg 5.5 or reg 5.11 ); filing an application for an extension of term of a pharmaceutical patent AFTER the normal term of the patent has expired; and any action in Chapter 20 of the Regulations. Regulation 5.9 allows the Commissioner to extend the time for an “evidentiary period” specified in reg 5.8 . Regulation 5.9 does not permit the extension of any other time period specified in Chapter 5 . Consequently, there are no time periods where both section 223 and reg 5.9 can apply. Also, there are some time periods that cannot be extended by either provision. As the tests applying to section 223 and reg 5.9 are different, it is essential to determine which extension provision is applicable to the situation.