We knew obtaining extensions of time in patent oppositions would not be easy under the new regime introduced by the Raising the Bar Act 2012, and a new factsheet from IP Australia provides some guidance on just how difficult it will be.

IP Australia (IPA) has published a factsheet entitled “Extension of Time for Filing Evidence” which provides some welcome guidance on how IPA propose to assess requests for extensions of time in patent oppositions under the new regime introduced by the Raising the Bar Act 2012.  The factsheet also provides an interesting insight into IPA’s perspective on the logistics of preparing evidence in opposition proceedings and shows a few areas where IPA perhaps underestimates the challenges that opponents and applicants can face.  You can access a copy of the factsheet here.

The new test for determining whether an extension of time is justified

Regulation 5.9 sets out that the Commissioner may extend an evidentiary period in a substantive opposition only if the Commissioner is satisfied that:

  • the party who intended to file evidence within a relevant evidentiary period has made all reasonable efforts to comply with all relevant filing requirements; and despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
  • there are exceptional circumstances that warrant the extension.

IPA will apply the same test as set out in Regulation 5.9 when considered whether to grant a request for a direction to extend an evidentiary period in a procedural opposition.

Always be diligent – IPA is taking a tough stance

It seems clear from IPA’s comments that, in order to put yourself in the best position to obtain an extension, you have to do your utmost to avoid needing one by acting quickly and diligently, being proactive and having contingencies in place.  Extensions will be much more difficult to obtain now and any request for an extension will need to explain the reasons for the extension in detail in order to convince IPA that you deserve one.

The factsheet makes clear that it is not enough for the party seeking the extension to have acted promptly and diligently at all times.  The party’s agent or legal representative and any expert engaged by them are also expected to act promptly and diligently.  This highlights the importance of picking a good team to support you in an opposition matter.

Few circumstances will be considered exceptional

By extending the diligent conduct obligations to the team supporting the opponent or the applicant, IPA has reduced the circumstances that it considers to be beyond the control of the party seeking the extension.  In general, it may be difficult for parties to show that there are exceptional circumstances that warrant an extension.  For example, the sudden loss of a preferred expert might not necessarily be considered exceptional circumstances unless you can explain why you were unable to find an alternative expert.

Be prepared to justify your decisions

Parties seeking an extension will also need to be prepared to defend the choices they have made in preparation of their evidence.  This is one area in particular where it seems IPA underestimates the challenges that opponents and applicants can face.  For example, IPA believes that the unavailability of experts due to involvement in other matters can suggest that a party had not made all reasonable efforts or acted promptly and diligently to comply with an evidentiary period, unless the party has “exhausted all efforts to find alternative experts”.  IPA seems to have forgotten that experts often have full-time jobs, aside from their role as an expert, and that these jobs will make demands on their time.

IPA’s approach also seems to gloss over the time and effort required to identify potential experts, to confirm whether the proposed experts have the correct technical experience, to assess which of the proposed experts are independent of the parties to the opposition, and to collect the evidence of the expert(s) ultimately found to be suitable. 

IPA cautions against the adoption of an inherently lengthy process of evidence preparation, and in this regard IPA specifically refers to the two stage manner described by the Federal Court in Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315.  In our view it would be unwise to ignore the best practice approach recommended by the courts simply for the sake of complying with IPA's new guidelines.  However, this clearly creates a tension between following the best practice approach for generating compelling and persuasive evidence and IPA directed expediency. Accordingly, parties must now be prepared to act quickly and diligently and justify the approach they intend to take in preparing evidence, as well as their rationale for selecting their preferred expert.

What if the extension is refused?

An added problem is, if an extension request is refused, IPA will not allow the requesting party a short extension to file evidence that is immediately available. The requesting party will also not be allowed to validate evidence that was filed out of time but while the extension request was pending.

There is no doubt that IPA will now take a hard line approach to extensions of time for filing evidence.  There is also little doubt that we will shortly see parties who have had their extension refused seeking review by the Federal Court under the Administrative Decisions (Judicial Review) Act.  It will be interesting to see the outcome of those reviews.  We suspect that the courts may take a different line to that proposed by IPA and that over time the hard line approach adopted by IPA may be softened to some extent.

Five practical suggestions for dealing with the new provisions

  1. Start identifying potential experts early – do not wait until the start of the evidentiary period to commence your search.
  2. Once you have identified your preferred expert, consider whether you should continue working with the next best alternative expert so that you have a back-up expert.
  3. Treat the preparation of evidence as a project management exercise.  Determine the key milestones, establish nominal deadlines for completing those milestones and work out your critical path. This will allow you to spot early whether you are likely to need more time to complete your evidence.  It will also help illustrate to IPA that you have taken steps to ensure your evidence is filed within the period.
  4. Consider requesting extensions early. It may be best to ensure that your request can be fully determined within the existing evidentiary period, as this will allow you to retain the opportunity to file evidence that is immediately available if the request is refused. Remember, IPA will not allow the requesting party a short extension to file evidence that is immediately available, so you will need to keep some time up your sleeve. Partial evidence can be better than no evidence at all.
  5. When you apply for an extension, make sure your request is very detailed. Unexplained delays are likely to be fatal.