Despite the best and most diligent efforts, mistakes and errors can and do sometimes happen. For example, rather than entering 12 January 2013 into a diary system, 21 January 2013 may be typed in error. Such simple errors can lead to an IP right inadvertently lapsing or not being filed. Fortunately the Australian IP system is forgiving and provides generous restoration provisions for pending and granted cases when genuine errors have been made.
While generous, patent, trade mark and design restoration provisions are only available when a genuine error or mistake has been made. That is, if a considered decision was made not to respond to an examiner, or pay necessary fees, the restoration provisions do not allow for a simple change of mind.
The provisions are not automatic. Rather, they are discretionary, though applied beneficially. That is, an examiner will consider whether the reasons explaining the cause of the error justify restoring the case, as well as taking into account public policy considerations.
An Australian examiner requires a full and frank disclosure. This is not the time to avoid or try to hide what has happened. Omission of facts will likely lead to the examiner requesting further information, or in a worse case, denying the restoration request.
The following information should be provided:
1 an explanation of the steps normally followed to ensure that deadlines are met
2 what did or did not occur that led to the error – for example, was data entered incorrectly, were instructions not sent or correspondence misfiled, or perhaps the cause was force majeur or ‘an act of God’ (remembering that a full and frank disclosure is required)
3 when and how the error was discovered
4 what steps were taken once the error was discovered, noting that prompt action to seek restoration is essential
5 who is able to act as a ‘witness’ to these facts – this should preferably be a person involved in, or responsible for, the circumstances leading to the error.
Once provided, the information will be placed in the form of a declaration to support the restoration request, which will be executed by the witness and will then be considered by the examiner.
No matter what the error is, or who made the error, it is important that once the error is discovered to ensure that we are notified as soon as possible so the request may be filed. Additional time is allowed to submit the supporting declaration.
If you have a problem with an IP right or are uncertain whether a lapsed right can be recovered, Watermark can assist in explaining your options and taking any available action to restore the IP right.
by Paul Fong