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Pairoj Suktarachan

Pairoj Suktarachan

Case [2025] APO 24 31 July 2025

Patent Law

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Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pairoj Suktarachan [2025] APO 24
Patent Application: 2020201206

Title:RogerRoj SocialScience BioInformatic WealthManagement FinancialServices Reformulation

Patent Applicant: Pairoj Suktarachan

Delegate:Dr S. J. Smith

Decision Date: 31 July 2025

Hearing Date: Written submissions filed on 5 June 2025

Catchwords: PATENTS – section 223 – extension of time to gain acceptance – whether failure to gain acceptance was due to an Office error – whether circumstances beyond control caused failure to gain acceptance – extension of time refused

Representation: Applicant was self-represented.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2020201206

Title:RogerRoj SocialScience BioInformatic WealthManagement FinancialServices Reformulation

Patent Applicant: Pairoj Suktarachan
Date of Decision: 31 July 2025
DECISION

The requirements for an extension of time to be granted under section 223(1) or section 223(2)(b) have not been met.
I refuse the application for an extension of time to gain acceptance.
REASONS FOR DECISION
Background

Patent application 2020201206 (the application) was filed by Pairoj Suktarachan (the applicant) on 19 February 2020. Following a request for expedited examination on 9 January 2024, a first examination report was issued on 25 January 2024. During the twelve-month examination period a further eight examination reports were issued. The ninth examination report was issued on 20 January 2025. The applicant filed responses on 25 and 26 January 2025, but there was insufficient time for an examiner to consider these before the application lapsed for failure to gain acceptance within the 12 month period provided (I note that because 25 January 2025 fell on a Saturday the final date for acceptance was 28 January 2025 pursuant to section 222A of the Patents Act 1990 (the Act)).
On 10 February 2025 the applicant requested an extension of time which I understand to be on the basis of either section 223(1) or section 223(2)(b), to allow the examiner more time to consider his response.
Following this request, on 17 March 2025, a tenth examination report was issued including objections indicating that amendments proposed to the specification are not allowable, and that the claimed invention is not patentable subject matter.
After a series of exchanges in which various Patent Office staff identified serious concerns with the request for extension and indicated an intention to refuse the request, the matter was set for hearing and on 5 June 2025 the applicant filed written submissions in support of the requests for extensions of time under sections 223(1) and 223(2)(b).
The law
Section 223 of the Act relevantly provides that:
(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 …
(2)Where, because of:
(a)…; 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,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Pairoj Suktarachan [2025] APO 24
Case: [2025] APO 24
Decision Date: 31 July 2025

CaseChat Overview and Summary

The applicant, Pairoj Suktarachan, sought an extension of time to gain acceptance of patent application 2020201206 under section 223 of the Patents Act 1990 (the Act). The application lapsed for failure to gain acceptance within the 12-month period provided, and on 10 February 2025 the applicant requested an extension of time. The applicant submitted that the failure to gain acceptance was due to either an error or omission by the Commissioner or a circumstance beyond the applicant's control. The delegate, Dr S. J. Smith, refused the application for an extension of time on 31 July 2025.

The court considered whether the failure to gain acceptance was due to an error or omission by the Commissioner or a circumstance beyond the applicant's control. The applicant argued that reliance on IP Australia's advice, the final date for acceptance falling on a weekend, followed by a public holiday, and examination history supported the request for an extension of time. However, the court found that none of these circumstances were causal of the failure to gain acceptance and did not provide a basis for an extension of time under section 223. Additionally, the court considered the objections raised in the examination reports and found that they were consistent with the guidance set out in the Patent Manual of Practice and Procedure. The court concluded that the invention did not provide a patentable artificial effect and there were no allowable amendments that could overcome the objections.

The court found that the provisions for allowance of an extension of time were not enlivened and there was no need to consider the exercise of discretion. Even if circumstances beyond the applicant's control were established, the court considered that it would be inappropriate to exercise the discretion to grant an extension of time. The objections to the application were such that there were no prospects of it being accepted, and an extension of time would serve no useful purpose.

The final orders were that the application for extension of time be refused.

Orders