The Commissioner of Patents has power to refuse an application even after it has lapsed (but is still capable of revival by payment of “late” fees). The Full Court has also affirmed the Commissioner’s power to set a two month time limit for response (especially where she actually allows six months) and to institute a hearing on her own motion.
In some ways, this is a “silly” case, but it does explain how the application process and restoration of a lapsed application works. The chronology was as follows:
- In December 2011, Miles requested examination of his patent application.
- In May 2012, the Commissioner’s delegate raised objections to grant, giving Miles two months in which to overcome the objections or risk the Commissioner making a direction to amend under s 107 or refusing the application.
- Miles did not respond.
- In September 2012 (i.e., 4 months later), the Commissioner wrote advising that, as no response had been received, the matter would be set down for hearing and allowing one month for submissions to be filed. The Commissioner’s letter warned that it was possible for the Commissioner to refuse the application or direct amendment and inviting Miles to submit his own amendments.
- October 2012 was the fifth anniversary of the application and continuation fees were payable. Miles did not pay the continuation fees.
- On 1 November 2012, the Commissioner refused Miles’ application on the basis that objections to grant had been appropriately raised and not overcome.
- On 28 March 2013, Miles paid the continuation fee (under s 142) and sought to amend the patent application.
The Commissioner said “bad luck, your application has already been refused” (or words to that effect).
Miles sought judicial review under s 39B of the Judiciary Act unsuccessfully. The Full Court (Bennett, Greenwood and Middleton JJ) dismissed his appeal.
Miles’ first argument was that the Commissioner had no power to refuse his application (in November 2012) because his application had already lapsed in October 2012 when he failed to pay the continuation fees.
The Full Court was having none of that. It was predicated on a misunderstanding of reg. 13.3(1) and 13.3(1A). Section 142(2)(d) provides that a patent application lapses if the applicant does not pay a continuation fee within the “prescribed period”. What constitutes the “prescribed period” is defined by reg. 13.3(1) and (1A):
(1) For paragraph 142(2)(d) of the Act:
>(a) a continuation fee for an application for a standard patent is payable for a relevant anniversary at the last moment of the anniversary; and >(b) the period in which the fee must be paid is the period ending at the last moment of the anniversary.
(1A) However, if the continuation fee is paid within 6 months after the end of the relevant anniversary (6 month period):
>(a) the period mentioned in paragraph (1)(b) is taken to be extended until the fee is paid; and >(b) the continuation fee includes the additional fee stated in item 211 of Schedule 7; and >(c) the additional fee is payable from the first day of the 6 month period.
Reg. 13.3(1) and (1A) were not to be read in some bifurcated manner, but in combination. This meant that, if the continuation fee was paid in the 6 month grace period, the “prescribed period” was extended up until the date the fee was paid, i.e. 28 March 2013. As the continuation fee was paid in this case within the 6 month period, therefore, the application was still on foot when the Commissioner refused it in November 2012.
The Full Court went on to reject Miles’ arguments that the Commissioner had no power to set a two month time limit for response to the Examiner’s report in May 2012 or to unilaterally institute a hearing.
One “odd” outcome of this, however, is that Miles’ application would indeed have lapsed in October 2012 if he had not paid the continuation fee in the grace period. In that case, the Commissioner would not have had power to refuse the application. I am not sure how that would help Miles either as, presumably, by that stage it would be too late to file another application.
Miles v Commissioner of Patents  FCAFC 109