Is Late National Phase Entry into Australia Possible?

It’s almost the deadline
Don’t miss the deadline, darling
When all your bad dreams will come true
Don’t miss the deadline
It’s almost the deadline, darling
I wouldn’t want it to happen to you

from the song Deadline – By Blue Oyster Cult

Unlike say Canada and China, there are no particular provisions for late national phase entry into Australia.  However, the general extension of time provision (under Section 223 of the Australian Patents Act), is applicable in some circumstances.  (This post is about late national phase entry but the situation is pretty much the same for the late filing of a Convention application into Australia.)

Extensions of time of twelve months (or even longer) have been granted in the past for late national phase entry into Australia .  So it is possible but it depends on the reasons why the applicant missed the initial 31 month deadline and, when they subsequently realised that they had missed it, what steps they then took.

The decision is made on a case by case basis and the applicant’s declaration explaining why the Australian national phase was not entered by the due date must be full and frank.  The Patent Office will be looking for the following factors:

The requirements in general are:

  1. There must have been an intention to enter the Australian national phase BEFORE the 31 month deadline.
  2. Due to an error or omission by the applicant or applicant’s attorney or other agent, the applicant did not take steps to enter the Australian national phase.  If the reason is simply that the applicant didn’t have sufficient funds for Australian national phase entry before the 31 month deadline then that would usually not be sufficient.
  3. Upon realising the error or omission the applicant acted quickly to request national phase entry.  If the applicant has after the passage of several months, for example, changed his mind and then decided to enter the Australian national phase then that would probably not be sufficient.  However, if the applicant has recently realised that he/she was incorrectly advised and then taken steps to enter the national phase late then that is much more likely to be sufficient.

A full and frank explanation of the above must be provided in a Declaration.

At the moment, the official extension of time fees are AU$100/month.

If the application for an extension of time to enter the national phase is unsuccessful then the $370 national phase entry fee will be refunded.  But, the AU$100/month extension fees will not be automatically refunded.

 



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