Deadlines and Extensions Flashcards
How do you obtain an extension under s117B?
Section 117B: Extension of time limits specified by comptroller
The time limit shall be extended (subject to subsections (4) and (5)) if:
- applicant/proprietor requests it
- the request is made in writing within 2 months of the expiry of the missed deadline (R109)
NB no form or fee
extensions requested outside of the 2 months are discretionary
How long does the extension under s117B last?
Section 117B: Extension of time limits specified by comptroller
Lasts until the earlier of:
- Two months; or
- the period prescribed under s20 (the compliance period or an extension for appeal)
NB the compliance period itself can be extended under R108
Section 20: Failure of application
Can multiple extensions under s117B(2) be obtained?
Section 117B: Extension of time limits specified by comptroller
No, if s117B(2) has already been used to extend a period then it can’t be used again, but the Comptroller has discretion to extend further (subject to any conditions)
Can periods specified in relation to proceedings before the Comptroller be extended under s117B?
Section 117B: Extension of time limits specified by comptroller
No
Why can’t reinstatement under s20A be used if a s117B extended deadline is missed?
Section 20A: Reinstatement of applications
Section 117B: Extension of time limits specified by comptroller
Failure to reply to an Examiner’s report renders the application ‘dormant’ not withdrawn. You still have the R30 compliance period to get the application in order, but this will now be discretionary if the s117B deadline is missed.
Section 117B: Extension of time limits specified by comptroller
What types of deadlines can be extended under R108?
Statutory deadlines e.g. paying fees, requesting examination
Which deadlines are extendable as of right under R108(2)?
As-of-right extensions are available for a period of two months for deadlines listed in part 2 of Schedule 4.
How are extensions under R108(2) obtained?
File a request (FORM + FEE) before expiry of the two-month period
What is the purpose of R108(1)?
R108(1) is a catch-all discretionary provision allowing the Comptroller to (further) extend any deadline other than those listed in parts 1 and 2 of Schedule 4 upon written request.
(Excludes periods related to establishing priority or that affect third parties)
Which deadlines are limited to a maximum extension of two months?
Under R108(5) deadlines specified in part 3 of Schedule 4 are limited to two months
e.g. filing of statement of inventorship and the right to be granted a patent; filing of name and address and translations; request for substantive examination; rule 30 period; entry into national phase
(NB part 3 and 2 overlap)
R108(7) - request for part 3 deadlines must be made in writing within the 2 month period
Can r108 part 2 deadlines be extended further beyond the as-of-right extension?
Yes, under R108(3) the Comptroller may (further) extend part 2 periods using FORM and evidence of why the extension is required. In this case the FEE is paid if the request is granted.
What happens to deadlines that fall on national holidays and weekends?
Deadlines will roll over to the next available day
What deadlines are not extendable under R108 (i.e. those under part 1 of Schedule 4)?
Includes, among others:
- rule 6(2)(b) - declaration of priority
- rule 7(1) - period for making a request to the comptroller for permission to make a late declaration
- rule 32(1) - application to reinstate a terminated application
- rule 37 and 38 - renewal of patents
- rule 40(1) - application to restore a lapsed patent
- rule 41A - payment of fees following restorations of a EP(UK)
- rule 109 (time limits specified by the Comptroller)
