Magnum Magnetics Corporation
[2019] APO 3
•11 January 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Magnum Magnetics Corporation [2019] APO 3
Patent Application: 2018201253
Title:Adhering Systems
Patent Applicant: Magnum Magnetics Corporation
Delegate: Isaac Tan
Decision Date: 11 January 2019
Hearing Date: Written Submissions due 11 November 2018
Catchwords: PATENTS – section 223 – extension of time to file a divisional application – error or omission pursuant to section 223(2)(a) – circumstances beyond the control pursuant to section 223(2)(b) – intention appears to be based on the realisation that relevant prior art could be avoided – the benefit of hindsight does not constitute an error or omission – no evidence that an error or omission reside with agent or attorney – grounds have not been made out – extension of time refused
Representation: Ernest Graf, Patent Attorney of Spruson & Ferguson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018201253
Title:Adhering Systems
Patent Applicant: Magnum Magnetics Corporation
Date of Decision: 11 January 2019
DECISION
The requested extension of time is refused.
REASONS FOR DECISION
Background
Australian patent application 2018201253 (application) was filed on 21 February 2018 in the name of Magnum Magnetics Corporation (Applicant), as a divisional of AU 2016200401 and AU 2011227401 (‘401 application). The application claims a priority date of 15 March 2010, which is in dispute for reasons which will later become apparent.
The application comes with a somewhat complicated history. AU 2016200401 is a divisional of AU 2013202357, which claims a priority date of 14 February 2012 from international application PCT/US2013/026119 filed under the Patent Cooperation Treaty (PCT). Examination had commenced on AU 2016200401 and AU 2013202357 and in both cases, a single examination report was issued, but no response was filed. Consequently, AU 2016200401 and AU 2013202357 failed to gain acceptance within the required 12 month period. Relevantly, the examination reports both raised United States Patent Application 2011/0223428 A1 entitled ‘Adhering Systems’, in the name of Douglas William Rummer, having a publication date of 15 September 2011, and lists Magnum Magnetics Corporation as an Assignee (Rummer). Relevantly, for reasons that will later become apparent, Rummer is one of three documents listed as priority documents.
However, the ‘401 application claims a priority date of 15 March 2010 from international application PCT/US2011/028535. Relevantly, PCT/US2011/028535 lists three provisional documents under Priority Data, one of which is the same document that Rummer claims priority from. A Notice of Acceptance was issued on 25 January 2016 which indicated that the ‘401 application had been accepted on 13 January 2016, and was advertised in the Supplement to the Australian Official Journal of Patents (the journal) on 4 February 2016.
On 21 February 2018, when the application was filed, the Applicant submitted a request under section 223 of the Patents Act 1990 (the Act) for an extension of time to claim divisional status from the ‘401 application. The Applicant requested to be heard on 11 October 2018. On 23 October 2018, a delegate of the Commissioner responded stating:
Hearings relating to section 223 are normally heard by way of written submissions. Therefore, I allow the applicant four (4) weeks from the date of this letter to file any submissions they wish in support of the request for an extension of time. Once submissions are received, or alternatively if no submissions are received, the matter will be passed to a hearing office to issue a written decision.
(emphasis in quote)
The Applicant lodged a Statutory Declaration on 19 November 2018. No submissions were filed.
Applicable law
The application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 (the Regulations) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d).
Section 223 of the Act provides as follows:
(1) The Commissioner must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a) the Commissioner or a Deputy Commissioner; or
(b) an employee; or
(c) a person providing, or proposing to provide, services for the benefit of the Patent Office; or
(d) the receiving Office; or
(e) the International Bureau of the World Intellectual Property Organization.(2) Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(2A) If:
(a) a relevant act that is required to be done within a certain time is not done within that time; and
(b) the Commissioner is satisfied, on the balance of probabilities, that the person concerned took due care, as required in the circumstances, to ensure the doing of the act within that time;the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.
Under section 223(11), a ‘relevant act’ for the purposes of section 223 means:
relevant act means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.
Sub-regulation 22.11(4) sets out that, for the definition of ‘relevant acts’ in subsection 223(11), the following are prescribed:
(a) an action mentioned in Chapter 5, other than an action or step taken under regulation 5.4, 5.5, 5.10 or 5.11;
(b) filing, during the term of a standard patent under subsection 71(2) of the Act, an application under subsection 70(1) of the Act for an extension of the term of the patent;
(c) an action mentioned in Chapter 20.In Knauf Plasterboard Pty Ltd v CSR Building Products Limited, the delegate provided a summary of principles for applying the provisions of section 223:[1]
[1] Knauf Plasterboard Pty Ltd v CSR Building Products Limited [2018] APO 64 at [6]-[8] citing Re Sanyo Electric Co Ltd and Commissioner of Patents [1996] AATA 832; (1996) 36 IPR 470 at [16]; at [21]; Kimberly-Clark Ltd v. Commissioner of Patents & Minnesota Mining & Manufacturing Company [1988] FCA 421; (1988) 84 ALR 685; 13 IPR 569 at [9]-[11]; Re Lazer Safe Pty Ltd and Commissioner of Patents [2001] AATA 967 at [11]; Re Apotex Pty Limited and Commissioner of Patents [2008] AATA 226 at [21]; Total Peripherals Pty Ltd v Commissioner of Patents [1998] AATA 784 at [14]; Oz Technology, Inc v Boral Energy Ltd [1999] APO 18; Re Weir Pumps Ltd and Commissioner of Patents and Stork Pompen BV [1988] AATA 331; (1988) 13 IPR 163 at [9].
(i) The statutory provision to extend time is beneficial in nature and should be applied beneficially.
(ii) While the applicant has the burden of placing before the tribunal the circumstances it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it be so described.
(iii) For section 223(2)(a) to be enlivened, it must be shown that an error or omission had contributed to cause the failure to perform the relevant act, i.e. there must be a causal connection between the error or omission and the relevant act that is required to be done within the stipulated time.
(iv) The applicants for an extension of time must demonstrate that they had an intention to do the relevant act within the time prescribed, and that an error or omission on their, or their agent’s, behalf reasonably could be said to have frustrated that intention. However, there will be exceptional circumstances where the relevant error precluded the formation of a specific intention. In such cases the required causal connection is satisfied if the error contributed to the failure to form the intention to perform the relevant act.
(v) “In order to make out the ‘proper case ... justifying an extension’ ... an applicant would ... have to go beyond a disclosure of the processes by which an agent’s errors came to be committed and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant ... relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.”The term “error or omission” in section 223 encompasses accidental slips, inadvertences and errors caused by faulty reflection; an unexpected failure to exercise due diligence and/or a flaw in mental function in carrying out an intention; and a breakdown in procedure in effecting an intention. Accordingly, the phrase “error or omission” has a broad scope.
In contrast, the failure to perform the relevant act cannot itself be the “error or omission” by which the failure occurred and a deliberate policy or decision that leads to the failure to perform the relevant act does not constitute an “error or omission”.
The phase ‘error or omission’ was further considered by the Federal Court in G S Technology Pty Limited v Commissioner of Patents, where Spender J stated:[2]
Most errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence. Where such errors and omissions are made against a clearly demonstrated desire to maintain the application (and thus not have it lapse), and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt, as is the case here, the considerations in favour of an extension seem to me to be quite persuasive.
[2] G S Technology Pty Limited v Commissioner of Patents [2004] FCA 1017; 63 IPR 9 at [65].
As to what constitutes ‘circumstances beyond control’, in Re Atomic Skifabrik Alois Rohrmoser v the Registrar of Trade Marks, Jenkinson J considered that this term means within the context of the Trade Marks Act 1955:[3]
In the context in which it is found, the expression `circumstances beyond the control of the person concerned' does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in paragraph 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent's servants. The section is, I think, correctly described as a force majeure provision.
[3] Re Atomic Skifabrik Alois Rohrmoser v the Registrar of Trade Marks [1987] FCA 22; 70 ALR 613 at [18] cited with approval in relation to the Patents Act in Jiejing Pty Ltd and Commissioner of Patents Ron Thomas and Allan Garnham Parties Joined [1995] AATA 100 at [104].
Lastly, it should be noted that section 223(2) stipulates that the Commissioner may extend the time, which indicates that this is a discretionary power.[4] One factor for consideration is the public interest, which lies in the efficient and orderly processing of matters before the Patent Office, without unreasonable delay, and in ensuring that invalid patents are not granted.[5]
[4] Acts Interpretation Act 1901 (Cth), s33.
[5] Vangedal-Nielsen, Erling & Ors v. Smith, Francis John & Ors [1980] FCA 163; 33 ALR 144. See also British Telecommunications Public Limited Company v Telstra Corporation Limited [2000] APO 50; Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8; 128 IPR 173; Bragel International Inc v Renee Qin and Lifeglo Pty Ltd [2005] APO 42.
Evidence on file
Since making the initial request for an extension of time to file a divisional application, the Applicant had filed a number of Statutory Declarations. Although they were filed prior to the making of a request to be heard, the contents of these declarations may be useful in order to attain a complete picture of the surrounding circumstances. The Statutory Declarations filed are by the following individuals:
·Ernest R Graf, dated 26 March 2018 (Graf #1), and 31 May 2018 (Graf #2).
·Joseph B. Stout dated 21 August 2018 (Stout #1), and 16 November 2018 (Stout #2) with Exhibit A.
Ernest R Graf is the Patent Attorney responsible for the application. Joseph B. Stout works for the Applicant as the Director of Product Development & Quality.
The request
On 21 February 2018, the Applicant applied for an extension of time of twenty-two (22) months to claim divisional status in respect of the ‘401 application. The ground relied upon is that, pursuant to section 223(2)(a), there was an error or omission by the person concerned or by his or her agent or attorney.
History of the request
In the lead up to the making of a request to be heard the Applicant had filed a number of Statutory Declarations. In his first declaration, Mr Graf provided a chronology of events. On 21 February 2017, a first examination report was issued for AU 2016200401, citing Rummer as an ‘X’ category document. A document is categorised as an ‘X’ category document if it meets the following requirement:
The claimed invention cannot be considered novel under subsection 7(1) in light of the document and/or cannot be considered to involve an inventive step under subsection 7(2) of the Act in light of the common general knowledge considered together with the document.
Around December 2017, Mr Graf assumed responsibility for the prosecution of AU 2016200401.[6] On 31 January 2018, Mr Graf received an email from William Klima of Vorys, Sater, Seymour and Please LLP (Vorys). Vorys is the US patent firm that is currently representing the applicant. Mr Graf was instructed to prepare a response to the examination report of 21 February 2017.[7] Mr Klima also noted that it did not appear that AU 2016200401 was a divisional of Rummer.[8] Upon further investigation by Mr Graf, it became apparent that Rummer could be eliminated as relevant prior art, if AU 2016200401 was able to claim divisional status from the ‘401 Application.[9] Mr Graf was subsequently instructed to prepare his 26 March 2018 declaration. Mr Klima’s instructions also noted that:[10]
in public PAIR (USPTO) US application no. 13/766,454 [to which AU 2016200401 and AU 2013202357 claimed priority] was transferred from another firm to Vorys as evidenced by a power of attorney dated May 29, 2017, and [Rummer] was transferred from the other firm to Vorys as evidenced by a power of attorney dated June 20, 2014. Also, it was noted that US 13/766,454 (filed 2-13-13) is a continuation-in-part of [Rummer] (filed 3-14-11) claiming priority to US provisional applications 61/333,224 (filed 5-10-10) and 61/314,094 (filed 3-15-10).
[6] Graf #1, [5].
[7] Ibid [6].
[8] Ibid [7].
[9] Ibid [8]-[10].
[10] Ibid [12].
On 3 April 2018, a Delegate of the Commissioner responded indicating that she was not satisfied that there was any intention to file a divisional application at the relevant time. Specifically, because the Applicant would have been aware of Rummer since mid-2013, as it had been identified as an ‘X’ document in the international search report dated 2 June 2013 for International Application No. PCT/US2013/026119, which AU 2016200401 and AU 2013202357 are related to, and in the examination report of 21 February 2017 for AU 2016200401, not no action had been taken until February 2018.
In response, on the 31 May 2018, Mr Graf provided a copy of the following email between Joe Stout and William Klima:[11]
[11] Graf #2, [3].
From: Joe Stout
Sent: Thursday, May 24, 2018 6:39 PM
To: Klima, William L.
Subject: RE: Australian Patent Application no. 2018201253Dear Bill,
In regards to claiming divisional status from granted Australian patent no. 2011227401 (the ‘401 patent) in connection with the above-identified Australian Patent Application, Applicant (Magnum Magnetics Corporation) always intended to claim priority to the earliest application possible, and that there was never any intention to deliberately isolate [Rummer] from the present application, such as for the purposes of assignment or licensing.
Please submit my above statement to the IP Australia Patent Office on behalf of Applicant.Sincerely yours,
Joseph B. Stout
Director of Product Development & Quality at Magnum Magnetics Corporation(e-mail addresses omitted)
Mr Graf submits that based on the above email, it was always an intention on the part of the Applicant that the grandparent application AU 2013202357 should have been amended to claim divisional status from the ‘401 application.[12] Moreover, no documentation was identified in either Vorys, or Mr Graf’s firm’s files, that explains why the previous firm of Stoneman Law Patent Group (Stoneman), who originally instructed Mr Graf’s firm to file AU 2016200401 and AU 2013202357, did not instruct that such an amendment be made.[13]
[12] Ibid [4].
[13] Ibid [5]-[6].
This explanation was considered insufficient to enliven section 223(2)(a) and on 25 July 2018, a Delegate of the Commissioner responded noting that the error or omissions to actions or inactions, appears to be attributed to Stoneman. However, the Delegate noted that there was no evidence from Stoneman outlining an actual error or omission, nor has any information been provided which amounts to a full and frank disclosure of all the surrounding circumstances that led to the failure to claim divisional status to the ‘401 application within the relevant time.
On 22 August 2018, the Applicant submitted Mr Stout’s declaration of 21 August 2018. In his declaration, Mr Stout states:[14]
I believe that it was always the intention of the Applicant that the grandparent application AU 2013202357 of the Patent Application should have been amended to claim divisional status from AU 2011227401.
I believe that there was an error at the time of filing of the grandparent application AU 2013202357 in not claiming divisional status to AU 2011227401. Further, such an error clearly led to the parent of the Patent Application not timely claiming divisional status to AU 2011227401. Further, such an error clearly led directly to the parent of the Patent Application not timely claiming divisional status from AU 2011227401.
I believe this error at the time of filing was inadvertent or unintentional by the applicant.
As described above, due to error or omission, the appropriate action was not taken to timely claim that the parent of the Patent Application was a divisional of AU 2011227401. Thus the granting of the present request for an extension of time is respectfully solicited to enable the Patent Application to claim divisional status from AU 2011227401.
[14] Stout #1, [3]-[6].
The Delegate of the Commissioner responded on 28 September 2018 reiterating that despite being aware of Rummer from as early as 2 June 2013, the Applicant’s inaction appears inconsistent with there having been an intention to amend at that time, noting a lack of evidence establishing that a specific intention existed, and what went wrong to prevent such an intention being realised. In this respect, the Delegate’s view was that the evidence appears more consistent with the sequence of events described by Mr Graf. That is, a realisation that Rummer could be avoided as relevant prior art if the application could claim divisional status from the ‘401 application, followed by instructions to file a declaration ‘asserting an “error or omission” involving an unintentionally delayed priority claim and/or unintentionally claiming priority to the wrong application, whichever is applicable.’[15]
[15] Graf #1, [11].
The Applicant requested to be heard on 11 October 2018. Mr Stout’s declaration of 16 November 2018 was filed for the hearing, and states the following:
As explained to me by the Applicant’s patent attorneys, the priority claim of PCT/US2013/026119 to US Appl No 13/766,454 is and always was invalid under Article 4C(4) of the Paris Convention. That is because US Appl No 13/766,454 claims priority to US Appl No 13/047,669 [Rummer], which was filed more than 12 months before the filing date of PCT/US2013/026119.
Thus there was a clear error made by the Stoneman Law Patent Group, the Applicant’s agent for PCT/US2013/026119, in claiming the invalid priority to US Appl No 13/766,454. I note that I was not made aware of the above error until this year and after the filing of the Patent Application.
However, concerning PCT/US2013/026119, the above error shows a clear intention that extends back to 2013 to claim priority to [Rummer] through US Appl No 13/766,454. I note that all of the drawings and technical subject matter of [Rummer] were copied into US Appl No 13/766,454.
I note that Martin L. Stoneman, the attorney named as agent on PCT/US2013/026119, is deceased, and I do not have access to further records documenting or mapping the priority claims concerning the present patent family.
The above error then led directly to the further error by the Applicant, at the time of filing of the grandparent application AU 2013202357, of not instructing that the grandparent application AU 2013202357 claim divisional status from AU 2011227401.
However, if the Applicant had been informed of the above clear error by the Stoneman Law Patent Group during the pendency of the grandparent application AU 2013202357, I believe that the Applicant would have promptly instructed that the grandparent application be amended to claim divisional status from AU 2011227401.
I joined the Applicant as an employee on March 24, 2008. I assumed responsibility for the patent portfolio of the Applicant on March 24, 2008. My predecessors were John Schneider (left the company) and Tom Love (still at company).
As described above, due to error or omission, the appropriate action was not taken to timely claim that the grandparent or parent of the Patent Application was a divisional of AU 2011227401. Thus the granting of the present request for an extension of time is respectfully solicited to enable the Patent Application to claim divisional status from AU 2011227401.
(emphasis in quote)
Exhibit A, reproduced below, is said to be a partial patent family history concerning the application.
In the present case, that the ‘relevant act’ is the failure to file a divisional application which derives priority from the ‘401 application, by the 4 May 2016.
Error or omission
The crux of the Applicant’s evidence appears to be that for a number of reasons, an error or omission resided with Stoneman, the Applicant’s previous firm. Firstly, that the priority claim of PCT/US2013/026119 to Rummer was always invalid. Secondly, that the Applicant was not made aware of this error until this year when the present application was filed. Moreover as Martin L. Stoneman, the attorney named as agent on PCT/US2013/026119, is deceased, the Applicant has no access to further records documenting or mapping the priority claims concerning the present patent family.
As an initial matter, I do not disagree that if the priority claim of an application was found to be invalid, it logically follows that certain steps might be taken in order to rectify this situation. However, noting that, in a first instance, Rummer was identified as an ‘X’ document in the international search report dated 2 June 2013 for International Application No. PCT/US2013/026119, it is not clear to me why the Applicant remained unaware of the invalid priority until this year. Assuming that the significance of Rummer was not realised at the first instance due to an oversight, Rummer was also cited as relevant prior art in the first examination report for AU 2013202357 dated 24 April 2014. No information has been provided which amounts to a full and frank disclosure of the circumstances leading from when Rummer was first identified in either the first or the second instance, as indicated above.[16]
[16] Cf Kelvindale Products Pty Ltd v TFH Temporary Fence Hire Pty Ltd [2009] APO 25.
Mr Stout’s declaration also states that Martin L. Stoneman, the attorney named as agent on PCT/US2013/026119, is deceased, and that he has no access to further records documenting or mapping the priority claims concerning the present patent family.[17] However, Mr Stout first joined the Applicant as an employee on 24 March 2008 and assumed responsibility for the patent portfolio of the Applicant on the same date.[18] The priority date of the ‘401 application is the 15 March 2010. In this respect, it would not be an unreasonable assumption that Mr Stout was involved with the present application from its conception, and would have participated in discussions with Stoneman which is likely to have been recorded in some form. However, no evidence in this regard has been provided.
[17] Stout #2, [7].
[18] Ibid [10].
Notwithstanding the above, it would appear that responsibility for AU 2016200401 and AU 2013202357 were transferred to Vorys on 29 May 2017, and the ‘401 application on 20 June 2014. However no information has been provided which indicates the existence or absence of, any files or records. Presumably, any transfer of responsibility for a patent application would be accompanied by files or records of relevance. Without any explicit information as to what actions, or inactions, may have been taken by Stoneman, I cannot be satisfied that an error or omission resides with Stoneman.[19]
[19] Cf Peter John Ward v Embrey Attachments and The Stanley Works [2008] APO 17.
Mr Stout further submits:[20]
However, if the Applicant had been informed of the above clear error by the Stoneman Law Patent Group during the pendency of the grandparent application AU 2013202357, I believe that the Applicant would have promptly instructed that the grandparent application be amended to claim divisional status from AU 2011227401.
[20] Stout #2, [9].
As I stated above, Mr Stout’s belief is consistent which what I would consider to be logical steps that would be taken, should the priority to Rummer be found to be invalid. However, nothing more is said. It is not clear to me, on what basis Mr Stout’s belief is founded. It is equally plausible, that an instruction to amend the grandparent application to claim divisional status from the ‘401 application, is based on the realisation that Rummer could be avoided as relevant prior art. In any event, Mr Stout’s belief appears inconsistent with the Applicant’s inaction in responding to the examination report issued in relation with AU 2013202357. Instead, the Applicant subsequently filed AU 2016200401, and again filed no response to the examination report issued in relation to AU 2016200401.[21] It was not until the present application was filed, that the Applicant took steps to claim divisional from the ‘401 application.[22] In my view, the evidence suggests that it is a likely plausibility, that the realisation was formed with the benefit of hindsight, which does not constitute an error or omission.[23]
[21] The University of Newcastle Research Associates Limited [2001] APO 64; Litton Bionetics, Inc [2002] APO 15.
[22] See. eg., Les Laboratoires Servier v GenRx Pty Ltd [2007] APO 29 at [32] citing Geron Corporation v ES Cell International PTE [2005] APO 11 where the period of time between when the ‘relevant act’ was due and performed, was a consideration in whether a reasonable presumption could be made that an intention to perform the relevant act exists.
[23] Woodside Energy Limited v Richard John Moore [2017] APO 17.
Consequently, on balance, I am not satisfied that the failure to perform the relevant action was due to an error or omission.[24]
[24] Ashmont Holdings Limited v American Home Products and Nature Vet Pty Limited [2002] APO 24.
Circumstances beyond control
While not a ground relied upon by the Applicant, in my view, the provisions of section 223(2)(b) is worth a brief consideration. As outlined above, circumstances beyond control designates ‘occurrences which neither the person concerned, nor any person acting on their behalf to do the act or take the step, could prevent.’[25]
[25] Re Atomic Skifabrik Alois Rohrmoser v the Registrar of Trade Marks [1987] FCA 22; 70 ALR 613 at [18].
The closest suggestion that an occurrence exists appears to be that relevant information, concerning Rummer was not provided to the Applicant until early this year but that in itself, would not satisfy section 223(2)(b). However as stated above, without any information which amounts to a full and frank disclosure of the circumstances leading from when Rummer was first identified in either the first or the second instance, I cannot be satisfied that circumstances beyond control existed which led to the failure to either amend the priority of AU 2016200401.
Conclusion
I am not satisfied that the Applicant’s failure to file a divisional application which derives priority from the ‘401 application, was the result of an error or omission enlivening the provisions of section 223(2)(a), nor am I satisfied that it was the result of circumstances beyond control pursuant to section 223(2)(b).
Consequently, it is appropriate that the request for an extension of time is refused.
Isaac Tan
Delegate of the Commissioner of Patents
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