Before the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was enacted, the Australian Patent Office expressed its intent to crack down on extensions of time to file evidence in patent oppositions. Now, over a year since the associated regulations came into force, it is clear that obtaining such an extension will be difficult.
To date, eleven Patent Office decisions have published considering requests for an extension of time to file evidence in a patent opposition under the new regulations. Six of the eleven requests have been refused. These decisions demonstrate that the days of the short, succinct extension of time request are behind us.
Extension of time regulations
Under the new regulations, the relevant questions the commissioner must consider in order to extend the time for filing evidence in a substantive opposition are:
- Has the party (and their attorney) made all reasonable efforts to comply with all relevant filing requirements?
- Was the failure to file the evidence in time despite the party (and their attorney) acting promptly and diligently at all times to ensure the evidence is filed in time?
- Were there exceptional circumstances that warrant the extension? (i.e. circumstances beyond the party’s control, an error by the Commissioner, a court order or a direction from the Commissioner)
An extension of time can only be granted if the Commissioner is satisfied that the answers to questions i) and ii) is yes, or if the answer to question iii) is yes.
If the Commissioner decides that an extension should be allowed they must determine the length of the extension having regard to what is reasonable in the circumstances1. We are yet to see a decision awarding a shorter extension of time than requested.
Based on the regulations, it appears that the circumstances that will satisfy an extension being granted under “exceptional circumstances” appear to be fairly clear cut2. In contrast, the circumstances that will determine whether a party has made “all reasonable efforts” and “acted promptly and diligently at all times” are yet to fully materialise.
What can we glean from the decisions where an extension of time was granted?
- It is important to engage experts early and provide evidence of any difficulties encountered in retaining experts in the relevant field3.
- Providing a comprehensive list of actions or chronology and substantive additional information on the nature of the evidence being sought and the effort that has been undertaken will support the granting of an extension4.
What can we learn from decisions where an extension of time was refused?
- Attorney’s need to act promptly and diligently at all times throughout the entire evidentiary period.
- An expert’s extended holiday during the statutory period is no excuse if the party knows about this absence at the outset and fails to make alternative arrangements5.
- The existence of ongoing settlement discussions will not justify an extension of time, regardless of whether or not consent is provided by the other party6.
- The scope of amendments requested by the Applicant during the time frame for filing evidence in answer does not justify an extension of time for the Opponent to file its evidence in reply7.
- If a full and frank disclosure is not provided with the request for an extension of time about the evidence being sought, the efforts that had been undertaken to obtain that evidence within the statutory period and the reasons that it could not be obtained, then the extension of time will be refused8.
- Claiming certain details are “confidential” will not be considered an adequate reason for not providing a full and frank disclosure in a request for an extension of time9.
Where are we now
Critically, if an extension of time is not granted, the evidence will be taken to have not been properly filed, and consequently not a part of the opposition. Accordingly, it is important to file evidence that has been prepared before the deadline, even if an extension of time is required to complete the evidence.
The recent decisions stress the importance of documenting actions taken during the entire evidentiary period, in particular any difficulties faced during the preparation of evidence. These decisions also highlight the need to identify potential factors that may interfere with the preparation of evidence early and take action to avoid any consequential periods of inactivity or reduced activity. While this is onerous, with adequate preparation, clients and their attorneys will be able to ensure they are well placed to obtain an extension of time to file evidence if required.
With the tightening of the evidentiary periods, patent oppositions now require continual strategic analysis and careful management by parties and their attorneys. Presently, FB Rice handles more patent oppositions than any other firm in Australia. Accordingly, we understand the specialist nature of opposition practice and are well placed to tailor the most appropriate opposition strategy for our clients.