IP Reform - Transitional arrangements for evidence provision around Extension of Time
9 Apr 2013
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 comes into full effect on 15 April 2013. The trade mark and patent opposition processes will be changed as a result of the reforms. The information below addresses the transitional arrangements for extensions of time to file evidence in opposition.
Regulations 22.9(5) for Trade Marks and 23.36(2) for Patents set out the transitional arrangements for extensions of time to file evidence in opposition proceedings. The new rules for extensions of time apply to periods (an "evidentiary period") that commence on or after 15 April 2013.
An evidentiary period means a period for filing evidence in support; a period for filing evidence in answer; or a period for filing evidence in reply.
We will apply the old rules to requests to extend the time for an evidentiary period that started before 15 April 2013.
We will apply the new rules to requests to extend the time for an evidentiary period that starts on or after 15 April 2013.
For example:
- The period for filing evidence in support starts on 20 April 2013. We will apply the new rules to any request for an extension of time to file the evidence in support.
- The period for filing evidence in support started on 5 April 2013. We will apply the old rules to any request for an extension of time to file the evidence in support. We will continue to apply the old rules until the evidence in support stage is completed.
- If the evidence in support is filed on or after 15 April, we will apply the new rules to any request for an extension of time to the subsequent stages of evidence in answer and evidence in reply.
- The period for filing evidence in answer started on 5 January 2013 and that period has been extended until 5 June 2013. We will apply the old rules to any requests for an extension of time to file evidence in answer. The new rules would apply to the subsequent stage of evidence in reply.
We expect that any request for an extension of time will include reasons that justify the extension, regardless of whether the new rules or the old rules apply.
Last Updated: 12/4/2013









