In accordance with section 143(a) of the Patents Act 1990 (Cth),3 a standard patent ceases if the patentee does not pay a renewal fee for the patent within the prescribed period. This payment period is extended if the renewal fee is paid within the grace period, which is six months after the actual renewal fee is due.4
The Applicant, Advanta Seeds Pty Ltd (Advanta Seeds) was required to pay a renewal fee by 6 October 2017, but did not pay it either by the due date or within the grace period. An application by Advanta Seeds pursuant to section 223(2) was advertised, as per section 223(4) of the Patents Act 1990 (Cth), in the Australian Official Journal of Patents in 2019.5 The application was opposed by Nufarm Pty Ltd, a commercial competitor of Advanta.
Advanta Seeds submitted that errors or omissions had occurred in relation to attempt to attend to the renewal requirements including incidents such as emails being sent to former Advanta Seeds employees and not forwarded to current employees, physical letters not being sent to Advanta Seeds’ head office or forwarded to another staff member, and the failure to enter the details of the patent filing into a new portfolio management software.6
However, it was considered that the errors submitted by Advanta were not relevant to the issue of the unpaid renewal fee, since the relevant dates were not provided accurately to inform the tribunal to make a decision. The application was ultimately refused.
Ultimately, this case highlights the threshold when establishing error or omission in accordance with section 223 of the Patents Act,7 noting that important dates pertaining to the circumstances in which the error occurred must be provided.
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1 Nufarm Australia Ltd v Advanta Seeds Pty Ltd [2023] FCA 109 (‘Nufarm’).
2 Patents Act 1990 (Cth) s 223 (‘Patents Act’).
3 Ibid s 143(a).
4 Patents Regulations 1991 (Cth) reg 13.6(2).
5 Patents Act (n 2) s 223(2)-(4).
6 Nufram (n 1) 14.
7 Patents Act (n 2) s 223.
