Legislation changes in 2013 have simplified opposition procedures and reduced delays. A key element of the change is a new test for obtaining extensions of time to file evidence.
Overview of the extension of time provisions
Regulation 5.9 of the Patent Regulations 1991 (the Regulations) applies to extensions of time to file evidence in both:
- substantive oppositions (under section 59, 75 or 101M) commenced on or after 15 April 2013; and
- any opposition commenced before 15 April 2013 where the period for filing evidence in support, answer or reply commenced on or after 15 April 2013.
The Commissioner may extend an evidentiary period only if satisfied that either:
- 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.
If the Commissioner decides that an extension should be allowed, regulation 5.9(3) requires that they must determine the length of the extension having regard to what is reasonable in the circumstances.
Regulation 5.12 applies to extend an evidentiary period in a procedural opposition (under sections 104 and 223 of the Patents Act 1990 and regulation 22.21 of the Patent Regulations 1991) commenced on or after 15 April 2013.
When considering a request under regulation 5.12 to extend an evidentiary period, the Commissioner will apply the same test to determine whether the extension is justified. Where an extension is allowed, the period of the extension will be determined having regard to what is reasonable in the circumstances.
The procedure for making the request and its processing by us will be the same for extensions under both regulations 5.9 and 5.12.
Frequently asked questions
How do I request an extension of time for filing evidence?
If you are seeking to extend the time to file evidence you must apply in writing.
Your application should be made before the deadline for filing evidence.
As the one requesting an extension, it is up to you to provide sufficient reasons to justify your request. You should explain why the extension period being sought is appropriate in the circumstances.
Once your application has been filed, you will generally not be given a further opportunity to supply additional reasons to support the extension.
The application must be in the approved form and be filed by means approved by the Commissioner. The application should not be filed via Objective Connect.
How do I establish that I have acted with 'all reasonable efforts' and 'promptly and diligently'?
Your application should fully explain all the actions you have taken throughout the preparation of your evidence to ensure the evidence would be filed on time and explain why, despite this, it was not possible to complete the evidence on time.
The following examples illustrate instances where a party had not made all reasonable efforts or acted promptly and diligently to comply with an evidentiary period:
- Unexplained delays such as settling on an expert, briefing them, preparing a draft and finalising the evidence.
- Delays in obtaining expert evidence that could have been anticipated and acted on.
- Unavailability of experts due to involvement in other matters, unless the party had exhausted all efforts to find alternative experts.
- The extension is being sought to obtain evidence of matters not referred to (either directly or by clear implication) in the statement of grounds and particulars.
- Delays due to holidays, or other leave which were known or could have been expected.
- The adoption of an inherently lengthy process of evidence preparation, when alternatives exist. For instance, in an opposition before the Commissioner, the parties are not required to prepare their evidence in a two stage manner (as required by the Federal Court in Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd  FCAFC 315). Consequently, the use of a two stage process is a matter of choice, and parties must ensure that no delay arises from this choice. Where a party can justify the preparation of their evidence in a two stage manner (as described in Minnesota Mining), they will need to show that they have diligently and promptly implemented that process.
- Delays in preparing evidence due to settlement negotiations. When parties are in negotiations, they will need to continue to prepare their evidence. An extension is only available if the party has continued to make all reasonable efforts to complete their evidence in time.
The nature and the significance of the evidence being prepared may be relevant to a request for an extension. However this alone will not determine the outcome of the extension request.
What are 'exceptional circumstances'?
Exceptional circumstances are defined in regulation 5.9(5) as including:
- a circumstance beyond the control of a party that prevents them from complying with a filing requirement
- an error or omission by the Commissioner that prevents a party from complying with a filing requirement
- an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action.
A broader test was given in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd  APO 57 to 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.
Circumstances that normally arise during the preparation of evidence cannot be regarded as exceptional. For example, an expert being unavailable for periods of time due to leave, work commitments, personal commitments or even short periods of illness are not exceptional circumstances.
A significant change in circumstances may not in itself be exceptional. For example, if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, the sudden loss of the preferred expert is not an exceptional circumstance.
Settlement negotiations are also not an exceptional circumstance.
How will my request be processed?
When we receive a request for an extension of time to file evidence, we will provide a copy of the request to the other party.
A delegate of the Commissioner will then consider whether the application provides sufficient justification for the grant of an extension.
If the delegate is satisfied that an extension may be justified, the parties will be advised and the other party will be asked if they wish to oppose the decision. If so, the matter will immediately be set for hearing and determination by a hearing officer. Otherwise the extension will be granted on the basis determined by the delegate.
If the delegate is not satisfied that an extension is justified, the matter will immediately be set for hearing and determination by a hearing officer. Either party may be heard, subject to the payment of the appropriate fee (under Schedule 7 to the Regulations).
Where an extension of time is allowed, the period of the extension will be determined on the basis of what is reasonable in the circumstances. For example, if an extension is allowed because a party is sick for a week, the extension period would be a week. Where a party cannot justify the full extension sought, the Commissioner will grant a period that is reasonable in the circumstances. The Commissioner will not grant an extension longer than is justified.
For extensions sought under regulation 5.9 or 5.12, an unsuccessful party will not be allowed a short extension to file evidence that is immediately available, or that has already been filed out of time.
When does the next evidentiary period start?
The subsequent evidentiary period commences either:
- on the day the last piece of evidence in the previous evidentiary stage is given to the other party and that party is notified that all the evidence has been filed; or
- the day the other party is notified that no evidence in the previous evidentiary stage has been filed.
Where no evidence in answer is filed, there is no subsequent period for filing evidence in reply.
In the event that an application for an extension of an evidentiary period is refused, the subsequent evidentiary period (where applicable) commences when the Commissioner notifies the relevant party that the previous evidentiary stage is complete.
Do I fall under the old regulations?
If both the opposition and the evidentiary period sought to be extended commenced before 15 April 2013, regulation 5.10(2) as in force immediately before 15 April 2013 applies. Parties should consult the Manual of Practice and Procedure for information about these provisions.