Lapsing and Restoration of an Australian Patent

A patent is more than just a legal document; it represents a strategic commercial monopoly, a valuable intangible asset, and a and a legally enforceable reward for innovation under the statutory framework of the Patents Act 1990 (Cth). From the filing of a patent application to maintaining a granted patent, the lifecycle of patent protection is governed by strict statutory deadlines, regulatory  and procedural requirements, and patent office practices. Any failure to comply, whether due to oversight, administrative error, or misunderstanding of statutory timelines, can result in unintended lapsing of a patent application or cessation of a granted patent, potentially exposing years of research, development, and investment to irretrievable loss.

When is a patent application at risk of lapsing?

In Australian patent law, the term ‘lapsing’ has a precise legal meaning. Lapsing refers to the termination of a patent application before it proceeds to grant, at which point the application ceases to be in force and is no longer capable of conferring prospective exclusive rights. Once lapsed, the invention enters a legal vacuum, enabling third parties to exploit the invention without infringement liability, subject only to limited restoration mechanisms.

Chapter 13 of the Australian Patents Act 1990 (Cth) outlines several circumstances under which a patent application may lapse. Most of the patent lapsing events are tied to non-fulfillment of procedural obligations within prescribed statutory timelines.

Failure to Request Examination

One of the most common causes of lapsing for an application to lapse is the failure to request examination. Under Section 142(2)(a) of the Patents Act 1990 (Cth), a standard patent application will lapse if examination is not requested within the required timeframe.

Importantly, Australia operates on a deferred examination system. Examination does not occur automatically upon filing. An applicant for a standard patent must take an affirmative step to formally request examination and pay the prescribed official fees. This request must be made either within five years from the application’s filing date or within a shorter period if directed by the Commissioner of Patents. Failure to take this affirmative procedural step results in automatic lapsing of the patent application by operation of law.

Non-Payment of Continuation Fees

Another frequent case of lapsing arises from non-payment of continuation fees. For a standard patent application to remain pending, annual continuation fees are payable annually from the fourth year of the filing date.

In accordance with Section 142(2)(d) of the Patents Act 1990 (Cth), failure to pay the continuation fee within prescribed period places a patent application into a statutory six-month grace period for late payment, during which late payment is permitted subject to additional fees. During this grace period, the application is considered to be in a legally vulnerable “state of lapse”, creating uncertainty for enforcement, licensing, and investment decisions. If the continuation fee remains unpaid at the expiry of the grace period, the patent application lapses definitively, with the lapse deemed to have occurred retrospectively on the original due date.

Failure to Achieve Acceptance Within the Prescribed Period

A patent application may also lapse if it fails to be accepted within the statutory prosecution timeframe. Once examination begins, the applicant must address all objections raised by the examiner and place the application in order for acceptance within 12 months from the date of the first examination report , unless valid extensions of time are obtained. Under Section 142(2)(e) of the Patents Act 1990 (Cth), failure to achieve acceptance by the final deadline results in lapsing of the patent application.

Effective prosecution therefore requires not only technical drafting expertise but also strategic legal judgment in responding to objections, narrowing claims where appropriate, and managing extension requests. Experienced patent attorneys play a critical role in balancing scope preservation against procedural compliance, ensuring acceptance is secured without unnecessary surrender of commercial breadth.

Other Procedural Grounds for Lapsing

Patent applications may also lapse due to failure to comply with administrative or formal requirements. These include non-compliance with a direction from the Commissioner of Patents, such as an amendment direction under Section 107 of the Patents Act 1990 (Cth), or failure to submits documents in the prescribed form, manner, or timeframe required by the Patents Regulations 1991. These grounds highlight that lapsing is not limited to substantive failures but frequently arises from procedural oversight, reinforcing the importance of continuous professional management throughout prosecution.

When does a Granted Australian Patent Cease?

Once a patent has been granted, it no longer “lapses” but may instead “cease”. This distinction is legally and commercially significant. A ceased patent is one that was once enforceable but is no longer valid and cannot be revived except through restoration mechanisms.

The most common cause of cessation, as outlined in Section 143 of the Patents Act 1990 (Cth), is the failure to pay the annual renewal fees. Renewal fees are payable annually for the life of the patent and are subject to a six-month grace period for late payment.

If renewal fees are not paid within the grace period, the patent ceases automatically, extinguishing all exclusive rights and enforcement remedies. At that point, the patented invention enters the public domain. Professional annuity management is therefore fundamental to maintaining enforceability across a patent portfolio.

Restoring a Lapsed Application or Ceased Patent

While lapsing or cessation is a serious event, Australian patent law recognises that genuine errors and exceptional circumstances can occur. Accordingly, section 223 of the Patents Act 1990 (Cth) provides a discretionary mechanism for extension of time, which if granted, has the effect of restoring the application or patent.

However, securing restoration is a formal legal process that requires a compelling and well-supported case. The Commissioner may grant an extension of time if the failure to perform the relevant act was due to either-

• An error or omission by the applicant or their agent (the most common ground).
• Circumstances beyond the control of the person concerned.

Restoration is not automatic and is subject to rigorous scrutiny by IP Australia. To succeed in a restoration application, it is not enough to simply state that an error occurred. Applicants must file a detailed, credible, and contemporaneously supported statutory declaration setting out: the factual chronology leading to the failure; the systems ordinarily in place to prevent such failures; how and why those systems failed in the particular case; and the prompt remedial action taken upon discovery of the error. The declaration must be persuasive, credible, and detailed. It requires careful reconstruction of events to demonstrate that there was a genuine intention to maintain the application and that the lapse was the result of an unintended and explainable fault.

It is crucial to act swiftly once a lapse is discovered. Any unexplained delay in seeking restoration may significantly undermine prospects of success. That said, during the period when an application is lapsed, third parties may begin to use the invention. The Patents Act 1990 (Cth) contains provisions that protect such individuals from infringement proceedings even if the application is later restored. This potential erosion of your exclusive rights shows the urgency and importance of addressing a lapse without delay.

Lapsing in Special and Sensitive Circumstances

The Patents Act 1990 (Cth) also contains provisions for lapsing in exceptional circumstances involving national security or regulated technologies. For instance, under Section 148 of the Patents Act 1990 (Cth), an application related to sensitive technology (such as that with military applications) may lapse if a certificate is issued by the Director of Safeguards in relation to sentitve subject matter. If such a certificate is later revoked, the Applicant can request the restoration of the application under Section 150.

Why work with us?

The lifecycle of a patent is complex, and the consequences of procedural errors can be severe. Preventing an application from lapsing or a patent from ceasing is the first and most important line of defense. Our firm’s proactive docketing, meticulous case management, and dedicated renewals service are designed to provide you with peace of mind, ensuring that all deadlines are met and your IP rights remain secure.

However, should the unexpected occur, we have the specialized expertise to navigate the intricate process of restoration. We understand the high stakes involved and are committed to building the strongest possible case to recover your invaluable intellectual property.

So, contact us today for a free consultation.