Extension of time provisions in the Patents Act cannot prevent “the Sword of Damocles” from falling

The Full Federal Court in Sunesis Pharmaceuticals Inc v Commissioner of Patents [2015] FCAFC 29 clarified that section 223(2) of the Patents Act, which allows the Commissioner of Patents to grant an extension of time to complete a required act, cannot be used to delay the effects of the commencement of legislative amendments. Specifically, the Court found that section 223 does not operate to back date a required act but rather it acts, as the provision suggests, only to extend the time in which the required act can be done.

This is an important point for patent applicants to be aware of in times of impending legislative amendments where the applicant has the option of proceeding under the outgoing or incoming regime. If the patent applicant erroneously were to miss the relevant cut-off for taking steps under the outgoing regime, section 223(2) will be of no use to extend the deadline and the applicant will be subject to the new regime.

In this case, the issue arose when Sunesis sought an extension of time to make an application for examination of its patent application to avoid the application of the Intellectual Property laws Amendment (Raising the Bar) Act 2012 (Cth) (the Amendment Act). Transitional provisions in the Amendment Act, provided for a 12 month “grace period” before commencement of the new requirements which enabled an applicant to decide whether to request examination under the old (less onerous) or new regime. Sunesis’ patent attorney, despite its intention to do so, failed to apply for examination of Sunesis’ patent application within the grace period. Sunesis, who were still within the required time to have their patent application examined albeit under the new regime, then applied for an extension of time to have the patent application examined under the old regime.

Sunesis argued that the power in section 223 to extend the time for the doing of a required act included circumstances where the requirement to act within a certain time is set by the commencement of a legislative amendment which was not in force when the relevant act, the request for examination, was said to have been “required”.

In affirming the findings of the Administrative Appeals Tribunal, from which the decision was appealed, the Full Court stated:

“Sunesis is really requesting the Commissioner to deem an application made on 15 May [2013] [which would have brought examination under the more onerous regime] to have occurred on 12 April 2013 [which would have brought examination under the less onerous regime]. That is not the power granted in s 223(2) of the Act, which is to extend the time for doing an act.”

The purpose of section 223 is to extend the time for the doing of an act, not to back date the act and as the Court stated “Section 223(2) of the Act cannot prevent “the Sword of Damocles” from falling on that date.”

Sunesis’ case seems to be a fairly clear statement from the Court for patent applicants to be mindful of the effects of legislative amendments when prosecuting their applications, as extension of time provisions cannot delay the effects of a commencing legislative amendment.