Flawed mental function saves the day in patent opposition

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.  

Extensions of time to do certain acts under the Patents Act 1990 are generally available under Section 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. 



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 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.


The Evidence

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 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, 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 S223 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.

[1] Mark Johnson v Paul Weingarth, Spiro Rokos and Paul Scully-Power [2020] APO 32 (7 July 2020)


Mark’s academic background is in computer science and electrical engineering. He assists clients in obtaining and enforcing their intellectual property rights in the areas of software, electronics and engineering. Prior to joining Phillips Ormonde Fitzpatrick, Mark worked for a leading automotive manufacturer.