SARB Management Group Pty Ltd v Vehicle Monitoring Systems Pty Ltd [2025] APO 13

Extensions of time allowed under s 223(2)(a) to pay 18th year renewal fees for 2005243110 and

I award costs according to Schedule 8 against the Opponent, SARB Management Group Pty Ltd.

1. Patent application 2005243110 was filed on 09 May 2005 and following examination, the application was advertised accepted on 29 November 2007. It was sealed on 13 March 2008.

1. Patent application 2011204924, which was a divisional grandchild of 2005243110 was filed on 21 July 2011 and, after examination, the application was advertised accepted on 29 August 2013. Following an opposition proceeding, the application was subsequently granted on 04 February 2016.

1. Both 2005243110 ('110 Patent) and 2011204924 ('924 Patent) (together, the Patents) were filed in the name of Vehicle Monitoring Systems Pty Ltd (the Patentee) and had a priority date of 17 May 2004.

1. On 9 June 2020, Sarb Management Group Pty Ltd (the Opponent for the present matter) informed IP Australia of Federal Court Proceeding NSD200/2019 concerning the Patents by serving a stamped copy of its Notice of Cross-Claim on the Commissioner.

1. Until 2021, the renewal fees for the Patents were paid regularly by Computer Patent Annuities (CPA). In April 2022, the renewal fees for the Patents were paid directly by the Patentee.
2. On 23 November 2023, IP Australia sent letters to the Patentee's agent on file, Spruson & Ferguson (S&F), informing them that the Patents had ceased due to non-payment of the renewal fees by the due date of 9 May 2023.

1. On 21 February 2024, the Patentee filed extension of time applications for 10 months from 09 May 2023 for payment of renewal fees for both the Patents. The requests relied upon s 223(2)(a), stating that an error or omission by the person concerned, or their agent or attorney caused non-payment. The extensions were advertised for opposition purposes in the Australian Official Journal of Patents on 28 March 2024.

1. Notices of Opposition were filed for both extensions on 04 April 2024 by the Opponent. The statement of grounds and particulars (SG&P) was filed on 03 May 2024 for both the Patents. On 21 May 2024, a delegate of the Commissioner wrote to the parties proposing both the oppositions to be joined to which both parties agreed. This decision relates to opposition to the extension of time for 10 months to pay renewal fees for both the Patents.

1. The Opponent filed a written summary of submissions (the Opponent's Written Submissions) on 11 February 2025. The Patentee filed their summary of submissions (the Patentee's Written Submissions) on 18 February 2025.

1. This matter is governed by s 223 of the Patents Act 1990 ("the Act"). The relevant part of s 223 for this matter provides:

(a) an error or omission by the person concerned or by his or her agent or attorney; or

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."

1. A "relevant act" for the purposes of s 223 is defined by s 223(11) and means:

"an action (other than a prescribed action) in relation to 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".

1. S 223(10) clarifies that Infringement proceedings cannot be brought in respect of an infringement committed:

(a) between the day on which the patent application lapses and the day on which it is restored; or

(b) between the day on which the patent ceases and the day on which it is restored.

1. S 223 has been considered in detail in many decisions. The Delegate in Knauf Plasterboard Pty Ltd v CSR Building Products Limited[1] has provided a useful summary of the s 223 principles as below:

"6. The following principles for applying the provisions of section 223 are derived from decided cases:

(i) The statutory provision to extend time is beneficial in nature and should be applied beneficially.[2]

(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.[3]

(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.[4]

(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.[5] 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.[6]

(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.'[7]

7. The term 'error or omission' in section 223 encompasses accidental slips, inadvertences and errors caused by faulty reflection;[8] an unexpected failure to exercise due diligence and/or a flaw in mental function in carrying out an intention;[9] and a breakdown in procedure in effecting an intention.[10] Accordingly, the phrase 'error or omission' has a broad scope.

8. In contrast, the failure to perform the relevant act cannot itself be the 'error or omission' by which the failure occurred[11] and a deliberate policy or decision that leads to the failure to perform the relevant act does not constitute an 'error or omission'.[12]"

1. Both parties filed evidence in this matter. The Patentee relies on the evidence of Mr. Saxon Hill, the Managing Director of the Patentee. Part of this evidence consists of Mr Hill's declarations dated 4 March 2024 filed with the s 223 requests for both Patents. As these declarations are identical except for the patent number appearing in them, I will treat them as a single declaration (Hill 1). The Patentee's evidence also consisted of another declaration by Mr Hill dated 14 June 2024 (Hill 2) and a declaration by Mr Rex Jacombs, the supervisor of the Patents Renewals Department at S&F dated 14 June 2024 (Jacombs). The Opponent relies on the evidence of Mr Cameron Roy Harvey, a lawyer and partner at Norton Rose Fulbright Australia, in a declaration dated 01 July 2024 (Harvey).

The missing elements in the Patentee's evidence

1. In the Opponent's Written Submissions, the Opponent highlighted that the Patentee's evidence referred to documents that had not been annexed to their evidence. The Opponent submitted that as a result of these missing annexes, I could not be clear "as to the conduct, knowledge, beliefs and mental processes of the Applicant's officers or agents, relevant to an understanding of the way the failure to timely renew the Patents occurred". In response, the Patentee filed the missing elements on 18 February 2025. A delegate wrote to the parties on the same day advising them the missing elements do not automatically form part of evidence. The delegate noted that, this being a procedural opposition run by direction pursuant to Reg 5.12, a Reg 5.23-type process may be adopted with respect to the missing elements filed by the Patentee and deferred the determination of whether the missing parts be included in the hearing.

1. The missing elements later filed by the Patentee include:

• A screenshot of CPA Global database for the '924 patent.
• The 2021 renewal fee payment advice sent by IP Australia for the '110 patent.
• The 2022 renewal fee payment advice sent by IP Australia for the '924 patent.

1. The Patentee submitted that some of the Annexures were wrongly attached with the evidence; for example, the screenshot of CPA Global database for the '110 patent was attached twice instead of the corresponding screenshot for the '924 patent which they provided as a missing element. The Patentee further submitted that missed renewal notices were also not filed with the evidence due to a clerical error. The Patentee additionally submitted that this information is important for the delegate to have before them and that it does not inconvenience the parties.

1. The Opponent on the other hand submitted that circumstances around these missing elements not filed in time are unclear and these missing elements do not fully explain the Patentee's case. The Opponent agreed with the Patentee in that it does not inconvenience the Opponent and that they could address these elements at the hearing.

1. To my mind, the most important factor to consider is what these missing elements show. There is no contention that the payment advices were sent by IP Australia in 2021 and 2022. These are also available on the casefile in the public domain and thus, are available for everyone to see. The screenshot of CPA Global for the '924 patent is used by the Patentee to corroborate the following statement in Hill 1 declarations:

"...At no time in 2023 were reminders to pay the renewal fee for the Patent sent to VMS, or to me in my capacity as Managing Director of VMS, by IP Australia, S&F or CPA Global or from any other entity."[13]

1. In my view, the screenshot does not shed light on anything new. There is no contrary evidence submitted by the Opponent to cast doubt on the statement in Hill 1.

1. As such, I consider that the later-submitted missing elements are not crucial to my decision as they do not bring forth any information that is not already present in the evidence. Hence, I see no reason to issue direction pursuant to Reg 5.12 to bring these missing elements into the current proceedings.

1. Relevant paragraphs from Hill 1 are produced below:

"4. I have been advised by S&F that Australian Patent Number 2005243110/2011204924 has lapsed on 9 May 2023, due to non-payment of renewal fees.

5. Between 2009 and early 2022, the renewal fees for the Patent were paid by CPA Global, a specialist annuity service provider on VMS's behalf. Under this arrangement, CPA Global contacted VMS for instructions, then paid the appropriate fee to IP Australia and invoiced VMS, including their service fee.

6. Early in 2022, I made the decision to pay future renewal fees for the Patent directly to IP Australia. In early 2022, I terminated CPA Global's service relationship with VMS and VMS received no further communications from CPA Global thereafter. As this action would reduce costs to VMS, I considered this an appropriate business decision.

7. On 29 April 2022, I arranged for payment of the renewal fee due on 9 May 2022 to be paid directly by VMS to IP Australia.

8. As I caused VMS to pay the renewal fee due in 2022 directly, I expected VMS to receive reminders from IP Australia for the next renewal fee. VMS received no reminders from IP Australia. At no time in 2023 were reminders to pay the renewal fee for the Patent sent to VMS, or to me in my capacity as Managing Director of VMS, by IP Australia, S&F or CPA Global or from any other entity. I have subsequently been advised by S&F that, as I did not formally change the address for service in favour of VMS, no reminders were sent to VMS by IP Australia. I was unaware of that requirement.

9. As VMS received no reminders in 2023 or 2024, I failed to realise that a renewal fee was due for the Patent or that it was unpaid.

10. On 23 November 2023, S&F received the official notice of the ceasing of the Patent and subsequently informed me of this. I immediately contacted S&F to discuss what action could be taken to pay the renewal fees and to restore the Patent."[14]

1. In Hill 2, Mr Hill clarified some dates set out in Hill 1:

"2. In relation to paragraphs 4 and 10 of my first declarations, I wish to clarify the date I first became aware that the Patents ceased. I first became aware that the Patents had ceased on 8 February 2024, as detailed below.

3. On or around 6 February 2024, VMS was notified that the Full Court of the Federal Court was delivering judgment on 9 February 2024 in an appeal relating to the infringement proceedings commenced by VMS in respect of the Patents.

4. On 8 February 2024, the day before the judgment was delivered, I received a phone call from Fraser Hill, the managing director of VMS. In that call Fraser told me that he had just looked up the Patents in the IP Australia online database and it said the status of the Patents were 'ceased'.

5. I immediately called Khajaque Kortian of Spruson & Ferguson Lawyers and told him what Fraser had told me and asked him to find out if this was correct. Mr Kortian called me back the same day and told me that the Patents had each lapsed as the renewal fees were not paid. I was subsequently informed by Spruson & Ferguson that the notices of ceasing in respect of the Patents had been received by Spruson & Ferguson on 23 November 2023.

6. At some point after that call with Mr Kortian, either the same day or within a couple of days, I instructed Spruson & Ferguson to apply for an extension of time in which to pay the renewal fee.

7. In relation to paragraph 8 of my first declarations, VMS' registered address was, until around September 2022, Level 17, 40 Mount St, North Sydney, NSW 2060 Australia. This was a serviced office operated by Regus.

8. On 17 August 2022, Regus notified VMS that it was permanently closing its Mount St serviced office and will be sending a 'transfer of Agreement'. Annexed and marked Annexure A is a copy of the letter from Regus.

9. On 18 September 2022, I received the foreshadowed 'transfer of Agreement' from Regus, the agreement was called a 'Virtual Office Agreement'. Annexed and marked Annexure B is a copy of the letter from Regus and the attached Virtual Office Agreement. I subsequently signed this agreement.

10. Under the Virtual Office Agreement, VMS address was moved from the serviced offices at 40 Mount St, North Sydney to the serviced offices at 1 Denison Street, North Sydney. This remains VMS' address to date.

11. The renewal notices may have been sent to VMS' address at Mount St, after the serviced offices permanently closed. I do not recall what arrangements were in place, if any, regarding the forwarding of mail. I do not recall updating VMS' address for renewal fee notifications with IP Australia."[15]

1. Both parties at the hearing agreed that the name in paragraph 4 of Hill 2 declaration should have been Mr Fraser Welch. I will be using the name of Mr Fraser Welch in this context in my decision.

1. Jacombs explained the working of S&F databases in the following paragraphs:

"4. S&F maintains two main databases: (a) 'Inprotech' - a database that contains

records of patents, design and trade marks registrations of clients; and (b)

'iManage' - a document management system (which is integrated with Inprotech

and other software systems used by S&F) that maintains records of documents

associated with each patent or patent application, ingoing and outgoing

correspondence and official notices. S&F also has an electronic link to a database

maintained by CPA through which S&F can access the records of each patent,

design and trade mark registration monitored and managed by CPA for S&F

5. Typically: (a) a report is generated by the 'Inprotech' database system when a

batch of ceasing notices is received from IP Australia; (b) that database will be

automatically updated to record the patent/s as lapsed; (c) if email details are

saved against the patent in the 'renewal instructor' field, an email with standard

wording is automatically generated to send to that email address notifying that the

patent has lapsed; (d) if no email details are saved against the patent in the

'renewal instructor' field, the database system will automatically check for another

correspondence method (eg fax or letter) and generate a communication with

standard wording to send by that correspondence method notifying that the patent

has lapsed; (e) the generated communication/s are automatically attached to the

email report (referred to in (a) above); and (f) the generated communication/s are

reviewed by the relevant S&F admin staff and then sent out. ...

(a) On 23 November 2023, S&F received an official notice from IP Australia of

the ceasing of each of the Patents due to non-payment of the renewal fees.

Copies of those notices are annexed and marked Annexures 'D1' and

(b) On 23 November 2023, an email report of ceasing notices received from IP

Australia was sent to pat.renewals.au@spruson.com. All staff in the renewal

department have access to this email account. This report included the

Patents. Annexed and marked Annexure 'G' is redacted copy of the report

(c) There were no email contact details recorded in the 'renewal instructor' field

for the '924 Patent. A fax was generated notifying that the '924 Patent had

lapsed. A copy of this fax is annexed and marked Annexure 'F'. However,

I have reviewed the iManage document database and there is no record of

(d) There was an email contact recorded in the 'renewal instructor' field for the

'110 Patent. An email was generated notifying that the '110 Patent had

lapsed. A copy of that email is attached and marked Annexure 'D'.

However, I have reviewed iManage and there is no record of that email

being sent. The date and time in the 'sent' field of the email is the date and

11. To date, I have not been able to ascertain why these communications were not

sent to VMS. I have spoken to the staff member responsible for reviewing and

sending these communications and she cannot recall and does not know why

these communications were not sent to VMS."[16]

1. Harvey provided the detailed background of ongoing litigation of the Patents in the Federal Court of Australia and Full Court of the Federal Court of Australia in the following paragraphs:

"4. On 14 February 2019, VMS filed proceeding NSD 200 of 2019 (First Instance

Proceeding) against SARB alleging infringement of the 110 Patent and the 924 Patent.

SARB defended the action and filed a cross claim alleging invalidity of the Patents on

various grounds. A number of decisions were handed down by Justice Yates and Justice

Besanko in relation to various interlocutory applications filed in the First Instance

Proceeding. Following a 10-day trial in March and April 2021, Justice Besanko handed

down his decision in Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd t/as Database Consultants Australia (No 8) [2023] FCA 183 on 8 March 2023. His Honour held that the Patents were valid and infringed by all three versions of SARB's

5. On 23 June 2023, SARB filed and served on VMS, a Notice of Appeal against Justice

Besanko's decision in respect of the validity of the Patents and infringement by PinForce

Sentinel Version 3. SARB did not appeal against the finding that PinForce Sentinel

Versions 1 and 2 infringed the Patents. The appeal proceeding was designated NSD 605 of 2023 (Appeal).

6. On 6 July 2023, VMS filed its Notice of Address for Service.

7. On 13 October 2023, VMS filed a Notice of Contention in the Appeal, followed by its

Chronology and Outline of Submissions on 20 October 2023.

8. The Full Court of the Federal Court of Australia heard the appeal in November 2023 and the decision of Justices Burley, Jackson and Downes in SARB Management Group Pty Ltd T/A Database Consultants Australia v Vehicle Monitoring Systems Pty Limited [2024] FCAFC 6 was handed down on 9 February 2024. Their Honours held that PinForce Sentinel Version 3 did not infringe the Patents but dismissed SARB's appeal in respect of the validity of the Patents.

9. In its judgment on 1 May 2024, the Full Court dealt with the question of whether SARB

should be the subject of an injunction regarding the Patents in SARB Management Group

Pty Ltd trading as Database Consultants Australia v Vehicle Monitoring Systems Pty

Limited (No 2) [2024] FCAFC 53. Sarb relied on the fact that the Patents were not in force. The Full Court noted that VMS had sought to extend the time to pay renewal fees, and indicated that until this process was complete it was not prepared to make orders in relation to an injunction (at [4]-[12])."[17]

1. The Opponent in their written and oral submissions, charged the Patentee with not filing full and frank evidence. The Opponent also raised the point of the Patentee's evidence being contradictory in parts.

1. The first and foremost issue raised by the Opponent is that it is not completely clear how Mr Hill became aware of the ceasing of the Patents. The two statements from the Patentee's evidence that the Opponent has pointed to, alleging them to be unreconcilable are:

"I have been advised by S&F that Australian Patent Number 2005243110/2011204924 has lapsed on 9 May 2023, due to non-payment of renewal fees."[18]

"On 8 February 2024, the day before the judgement was delivered, I received a phone call from Fraser [Welch], the managing director of VMS. In that call Fraser told me that he had just looked up the Patents in the IP Australia online database and it said the status of the Patents were 'ceased'."[19]

1. As another example of contradictory evidence, the Opponent pointed to Hill 1 at [6] that says that, after Mr. Hill terminated CPA Global's relationship with the Patentee in early 2022, the Patentee received no further communications from CPA Global. The Opponent also pointed to Jacombs Annexures A1 and A2, both of which are screen captures from the CPA Global database for the '110 Patent (attached twice), suggesting the reminder for '110 Patent was sent on 3 March, 1 June and 3 October 2022 (being very much after "early" 2022).

1. The Opponent further pointing to Jacombs at [10], submitted that S&F received the notices of ceasing from IP Australia on 23 November 2023, and also that a fax (with respect to '924 Patent) and an email (with respect to '110 Patent) were generated advising the Patentee of the ceasing of the Patents. The Opponent also noted from Jacombs that the fax and email generated for sending to VMS Global were never sent. The Opponent then, apparently highlighting a lacuna in the Patentee's evidence, noted that Jacombs gives no evidence about whether the remaining notices in the 23 November 2023 email report were sent to the relevant clients and, if so, why a different approach was taken with respect to these particular notices.

1. On the timing of filing the extension of time request, the Opponent referred to Hill 1 at [10] which states:

"[o]n 23 November 2023, S&F received the official notice of the ceasing of the Patent[s] and subsequently informed me of this. I immediately contacted S&F to discuss what action could be taken".

The Opponent submitted that if Mr Hill was informed at that time, there is no explanation as to why the request for an extension of time was only filed on 21 February 2024, some months later.

1. Further on timing, the Opponent submitted that the extension of time applications were filed on 21 February 2024, almost two weeks after Mr Hill first learnt, according to Hill 2, of the lapsing of the Patents. The Opponent also noted that the supporting evidence (Hill 1) was filed almost two weeks after that, on 4 March 2024, and contained an imprecise description of how and when Mr Hill was alerted to the ceasing of the Patents. The Opponent alleged that only after reviewing Harvey, did Mr Hill provide an alternative explanation.

1. At the hearing, the Patentee, while conceding that Mr Hill's conduct was not completely free of negligence, noted that there was never an intention from the Patentee's side to let these Patents lapse. The Patentee highlighted [11] of Hill 1 in support of this assertion.

1. Regarding the issue of irreconcilability of Hill 1 and Hill 2, the Patentee submitted that Hill 2 is used to clarify the ambiguity in Hill 1. The Patentee pointed to [10] of Hill 1 that states:

"On 23 November 2023, S&F received the official notice of the ceasing of the Patent and subsequently informed me of this." (my italics)

The Patentee then, pointing to [4-5] of Hill 2, submitted that it clarifies when that "subsequently" was; it was after receiving a call from Mr Welch on 8 February 2024, about the status of Patents, when Mr Hill contacted S&F to verify the status, and S&F subsequently informed Mr Hill of this.

1. The Patentee, referring to the screenshot of CPA Global database for '110 Patent, annexed as A1 to Jacombs, submitted that the pattern of reminders from CPA Global indicate that the first reminder for a renewal payment was sent in December of the previous year, the second reminder was sent in March of the same year in which the renewal payment was due and the third reminder was sent in June of the same year. The Patentee further submitted that the reminders sent by CPA Global to the Patentee on 31 December 2021, 3 March 2022, 1 June 2022 and 3 October 2022 were in respect to the 2022 renewal fee that was paid by the Patentee directly. The Patentee also emphasised that there were no reminders sent by CPA Global to the Patentee regarding the 2023 renewal fee as, according to the pattern of reminders, the first reminder would be sent in December 2022 by which the case had a status "lapsed" in CPA Global's system. I have reproduced Annexure A1 to Jacombs showing the pattern of reminders below:

1. The Patentee submitted that a series of errors caused the non-payment of renewal fees. The first error was the wrong assumption of Mr Hill that, having paid the renewal fee in 2022, VMS would receive a reminder notification from IP Australia regarding payment of the 2023 renewal fee. The second error was (the Patentee)(Mr Hill) not knowing the need to update the address for service for the Patents with IP Australia when the registered office of VMS changed its location. The third error was relying solely on reminder notices from IP Australia to pay the renewal fee.

1. Taking the errors identified by the Patentee in their submissions, I note that the second error of not updating the address for service with IP Australia for the Patents was not causal of the non-payment of the renewal fee. With S&F listed as the Patentee's registered Patent Attorney firm, the practice of IP Australia when an applicant is represented by an attorney is to not send renewal reminders to the attorney or the applicant. So, irrespective of the postal address on file, there would be no (postal or electronic) reminders sent. I further note for completeness that the 'payment advice' were also sent and accessed (by CPA Global until 2021 and by VMS in 2022) electronically and not posted. Hence, among the errors identified by the Patentee, the relevant ones are Mr Hill's faulty assumption that, having paid the renewal fee in 2022, VMS would receive a reminder notification from IP Australia regarding payment of 2023 renewal fee and Mr Hill relying solely on reminder notices to pay the renewal fee.

1. I am satisfied that the evidence establishes that there was/were error(s) on part of the Patentee or their agent. In my view, the mistaken expectation of Mr Hill regarding receiving renewal reminders from IP Australia for payment of the renewal fee and his sole reliance on such renewal reminders to pay the renewal fee, in the absence of which he forgot to do so, constitute the relevant error or omission.

Did the error or omission cause the failure to pay the renewal fee?

1. Given my determination of the relevant error, there is no doubt that the error was causative to non-payment of the renewal fee.

1. The power provided by s223(2) is discretionary - "the Commissioner may...extend the time for doing the act" - and it remains to be considered whether the balance of relevant factors justifies the exercise of the Commissioner's discretion in favour of the Patentee. Factors relevant to the exercise of discretion were summarised in Vangedal-Nielsen v Smith (Commissioner of Patents)[20] and relevantly include:

1. whether the Commissioner is satisfied that a proper case has been made out justifying an extension;

1. whether there has been undue delay in seeking an extension of time;

1. the interests of the parties in refusing or granting an extension;

1. In balancing these factors, it is "more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time"[21].

1. The Opponent's submissions rely on the assertion that the Patentee has not provided a full and frank disclosure of the circumstances and that their evidence is vague, contradictory and insufficient to establish that there was a relevant error or omission. I note that Hill 1 was vague in parts. However, Hill 2 clarified the relevant circumstances, satisfying me that there was a relevant error or omission. The contradictions pointed by the Opponent in some parts of the evidence are mere ambiguities which could be resolved by having regard to the complete evidence.

1. I am satisfied that a proper case has been made out.

Has there been undue delay in seeking the extension of time?

1. The Opponent alleged that Mr Hill was informed of the ceasing of the Patents on 23 November 2023 as per [10] of Hill 1 and the screenshot of the email generated (with a "sent date" of 23 November 2023) by S&F regarding the '110 Patent. Hence, the Opponent submitted that the delay between 23 November 2023 and filing of the extension of time requests on 21 February 2024 is excessive and unexplained, and as such the Commissioner should refuse to exercise the discretion to grant the requested extensions.

1. According to [10] of Hill 1 which has been reproduced before in this decision, S&F received the ceasing notice on 23 November 2023 from IP Australia and subsequently informed Mr Hill of this. There is no clear date mentioned in Hill 1 when Mr Hill was informed of the ceasing of the Patents. It is clarified in Hill 2 that he first became aware of it on 8 February 2024 when Mr Welch called him about the status of Patents. Mr Hill then contacted S&F to verify the status the Patents and S&F subsequently informed him of this. I also note that regarding the generated email with "sent date" in Jacombs Annexures, Jacombs clearly states that:

"I have spoken to the staff member responsible for reviewing and sending these communications and she cannot recall and does not know why these communications were not sent to VMS"[22].

1. The only conclusion I can draw from this statement is that, despite the email being generated in the system, it was not sent to VMS. Although what caused the breaking of the S&F system such that the email generated to be sent to VMS was not sent remains unexplained, there is no evidence for me to conclude that Mr Hill became aware of the ceasing of Patents before 8 February 2024. The extension of time requests were filed on 21 February 2024, 13 days later. There has been no undue delay that would weigh against granting the extension.

1. The Patentee's interests lie in the extensions being granted and the Patents restored for it to benefit from the full term of the Patents. The Opponent's interests lie in the extensions being refused and the injunctions that were granted as a result of findings of infringement of the Patents to be overturned. The Opponent submitted that it would be prejudiced by the granting of the extensions since, despite the Patents having ceased, the permanent injunction orders from the court were not set aside. The Patentee submitted that the prejudice claimed by the Opponent was perplexing as the infringement proceedings or injunctions could not be brought against a party in the period for which the Patents have ceased. I agree with the Patentee and understand that s 223(10) supports this. Hence, I do not see any undue prejudice against the Opponent in granting of the extensions. The interests of the parties are largely offsetting.

1. In the present circumstances, the status of the Patents is uncertain. Granting the extension would restore the Patents to the Register, providing the public with certainty as to the rights afforded to the Patentee. Similarly, refusing the extension would also provide the public with certainty as to the status of the Patents. Consequently, I consider the public interest to be a neutral consideration.

1. I am aware of the beneficial nature of s 223 and note the comments of Spender J in G S Technology Pty Limited v Commissioner of Patents:

"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."[23]

1. Having regard to the factors set out above, on balance I am satisfied that it is appropriate to exercise discretion in this case.

1. I am satisfied that the failure to pay renewal fees was the result of an error or omission enlivening the provisions of s223(2)(a) and that it is appropriate to exercise the discretion to grant an extension under that provision. I allow the extensions of time for the Patents.

1. It is usual in matters before the Commissioner that costs follow the event. The Patentee's request for an extension of time has been allowed, and the Opponent has been unsuccessful in its objection. I therefore award costs against the Opponent in accordance with Schedule 8.

[1] Knauf Plasterboard Pty Ltd v CSR Building Products Limited [2018] APO 64 at [6] - [8]

[2] Re Sanyo Electric Co Ltd and Commissioner of Patents [1996] AATA 832, (1996) 36 IPR 470 at 479 [16]

[4] Kimberly Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421; (1998) 12 IPR 569 at 579 [9], 582 [15]; Re Lazer Safe Pty Ltd and Commissioner of Patents [2001] AATA 967 at [11]

[6] Re Apotex Pty Limited and Commissioner of Patents [2008] AATA 226 at [21]

[7] Kimberly Clark Ltd v Commissioner of Patents (No 3), supra at 583-584 [17]

[9] Total Peripherals Pty Ltd v Commissioner of Patents [1998] AATA 784 at [14]

[10] Oz Technology, Inc v Boral Energy Ltd [1999] APO 8

[11] Kimberly Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421; [1988] 13 IPR 569 at 580 [11]

[12] Re Weir Pumps Ltd and Commissioner of Patents and Stork Pompen BV [1988] AATA 331; (1988) 13 IPR 163 at 166-167 [9]

[13] Hill 1 declarations for '110 and '924 Patents, at paragraph 8

[14] Hill 1 declarations, paragraphs 4 to 10

[15] Hill 2 declaration at paragraphs 2 to 11

[16] Jacombs declaration at paragraphs 4-5, 10-11

[17] Harvey declaration at paragraphs 4-9

[18] Hill 1 declarations at paragraph 4

[20] [1980] FCA 1017; (2004) 63 IPR 9 at 24 [65]

[21] Re Sanyo Electric Co Ltd and Commissioner of Patents [1996] AATA 832; (1996) 36 IPR 470 at 479 [16]

[22] Jacombs declaration at paragraph 11

[23] [2004] FCA 1017; (2004) 63 IPR 9 at 24 [65]