Australian Patent Opposition Extensions of Time

Australian Patent Opposition Extensions of Time: A Review – 24 April 2014

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into force on 15 April 2013 and updated the Patents Act 1990 and the Patents Regulations 1991, including amendments to the procedures relating to patent oppositions. For many who regularly deal with patent oppositions, the changes to the extension of time provisions for filing evidence were always going to cause problems. A brief overview of the Australian opposition procedure can be found here.

The Old Law

Prior to 15 April 2013, IP Australia had to be reasonably satisfied an extension of time “is appropriate in all the circumstances”. Case law dictated that only basic reasons were required to obtain an extension and, therefore, the practice of obtaining multiple rounds of three month extensions was widespread. It was not uncommon for two or three extensions of time (of three months each) to be sought and obtained, meaning oppositions often took years to resolve.

The New Law

The intention of the law, as it currently stands, with respect to opposition proceedings is to “reduce delays” and “introduce a more rigorous test for granting extensions of time to file evidence”[1]. The test that IP Australia must now apply, when deciding whether to allow an application for an extension of time, has been revised. Regulation 5.9(2) of the Patent Regulations 1991 (as amended on 15 April 2013) requires the party applying for the extension must demonstrate that either:

they have 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” are unable to do so; or
there are exceptional circumstances.

Notably, failure to make “all reasonable efforts to comply with all relevant filing requirements”, at any stage during the opposition procedure, may affect the ability to obtain an extension of time to a period in which it is possible to demonstrate that the party has acted promptly and diligently at all times.

The Current State of Play

Seven published decisions have issued dealing with extensions of time under the law as it applies after 15 April 2013 (up to 22 April 2014). Five of these decisions refuse an extension of time and two allow the extension. Of course, decisions only issue where either an extension of time is proposed to be granted and is objected to, or an extension of time is refused and the applicant (of the extension of time) requests to be heard. This does not necessarily represent all the extensions of time applied for and, at least, there is anecdotal evidence that extensions of time have been granted[2]. However, given the intent of the new extension of time provisions, I would expect that most patent attorneys would give considerable thought to objecting to any extension of time application which is proposed to be granted under the new law.

The decisions issued provide some guidelines as to what is required to obtain an extension. These are:

Reasonable Efforts

Making “all reasonable efforts to comply with all relevant filing requirements” is considered over the period of the whole opposition process, not just the evidentiary period in question[3].
Detailed submissions as to the actions taken to date, and, particularly, the period in question must be furnished.

“[I]t is necessary to understand the actions that they have taken (for instance, what was done, when it was done, how it was done, by whom it was done) covering at least the period in question, and the nature of the evidence that they are preparing.” – TRED v McCarthy[4]

Relying on one person, whether that it is the expert or the patent attorney, is not, necessarily sufficient; efforts must be made to seek an alternative or explain why that person is not replaceable[5].

Acting Promptly and Diligently

Consideration of the whole evidentiary period, not just any extended period, of the current phase of the opposition is relevant, when considering whether the party has acted promptly and diligently “at all times”[6].
“At all times” is a key aspect – there must be no significant gaps in the timeline[7].
Suspending work due to settlement negotiations, or waiting for the outcome of other processes, does not constitute acting promptly and diligently[7],[8].
An expert’s involvement in other opposition matters can be a relevant factor when considering whether the party has acted promptly and diligently, but evidence must be provided to demonstrate the effort required to be allocated to any alternative tasks and their urgency[8].

Notably, the issues of “making all reasonable efforts” and “acting promptly and diligently” are, often, considered to be one and the same[9].

Exceptional Circumstances

The only decision which has concluded that “exceptional circumstance” warranted the extension of time was a “stay” of the opposition proceedings by IP Australia[10]. No decisions have concluded that circumstances put forward by the relevant party have constituted “exceptional circumstances”.
Situations which would be regarded as exceptional circumstances include “matters outside the normal evidentiary process and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence”[11].
There appear to be obiter comments suggesting that a change in circumstances of an expert may constitute exceptional circumstances, such as unexpected leave or work commitments[12].
Exceptional circumstances are not: the new amendments to the regulations; an assertion that the acceptance of the application is in error; the request of an applicant for further and better particulars; holidays of an expert, where they were known well in advance of the deadline; documents in Evidence in Support that were not particularised in the Statements of Grounds and Particulars; procedural fairness; or the Melbourne Spring Racing Carnival[13]!

Summary

Overall, the application of the extension of time provisions by IP Australia is not surprising for those who attended any of the IP Australia workshops prior to the current law coming into force on 15 April 2013. It was fully expected that engaging experts at an early stage and otherwise ensuring that the opposition process never appears to “grind to a halt” would be required if an extension of time was ever going to be allowed. As such, IP Australia’s goal of increasing procedural efficiency with respect to patent oppositions is being achieved.

The question is whether the changes in the procedures actually correspond with the separate goal of “raising the bar” of patentability. Whilst patent opposition procedures clearly needed some attention, the results of the extension of time provisions are more likely to “lower” the bar to patentability, certainly in the opposition phase.

Australian Patent Opposition Extensions of Time – A Review