Deadlines and Extensions

Question 1

What types of deadlines does section 117B relate to?

Answer 1

Deadlines specified by the Comptroller (e.g. the deadline to respond to an exam report)

Question 2

How do you obtain an extension under s117B?

Answer 2

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

Question 3

How long does the extension under s117B last?

Answer 3

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

Question 4

Can multiple extensions under s117B(2) be obtained?

Answer 4

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)

Question 5

Can periods specified in relation to proceedings before the Comptroller be extended under s117B?

Answer 5

No

Question 6

Why can’t reinstatement under s20A be used if a s117B extended deadline is missed?

Answer 6

Failure to reply to an Examiner’s report renders the application ‘dormant’ not withdrawn. You still have the R30 period to get the application in order, but this will now be discretionary if the s117B deadline is missed.

Question 7

What types of deadlines can be extended under R108?

Answer 7

Statutory deadlines e.g. paying fees, requesting examination

Question 8

Which deadlines are extendable as of right under R108(2)?

Answer 8

As-of-right extensions are available for a period of two months for deadlines listed in part 2 of Schedule 4.

Question 9

How are extensions under R108(2) obtained?

Answer 9

File a request (FORM + FEE) before expiry of the two-month period

Question 10

What is the purpose of R108(1)?

Answer 10

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)

Question 11

Which deadlines are limited to a maximum extension of two months?

Answer 11

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

Question 12

Can part 2 deadlines be extended further beyond the as-of-right extension?

Answer 12

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.

Question 13

What happens to deadlines that fall on national holidays and weekends?

Answer 13

Deadlines will roll over to the next available day

Question 14

What deadlines are not extendable under R108 (i.e. those under part 1 of Schedule 4)?

Answer 14

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)