Patent Office Adopts Hard Line On Requests For Extensions Of Time In Patent Oppositions

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In refusing to grant an extension of time in the Tred v McCarthy1 decision, the Patent Office has indicated that they will interpret the new provisions relating to requests for an extension of time during an opposition very strictly.

The Patent Office has also indicated that substantial evidence will need to be filed to support that an applicant for an extension of time had made all reasonable effort to comply with the relevant filing requirements and had acted promptly and diligently at all times to ensure the evidence was filed in time.

The required information includes details as to when certain actions were done, how long those actions took, and when and for how long particular absences/lack of availability occurred.

Background

The Raising the Bar provisions for Patent Oppositions came in to effect on 15 April 2013. Notably, these provisions have made it more difficult to obtain extensions of time for filing evidence.

Briefly, under the previous provisions extensions of time for filing evidence were granted provided adequate reasons were given. However, the ease at which extensions of time were obtained was considered to lead to a protracted opposition process. To address this, the amendments to the Patent Regulations under the “Raising the Bar” Act have made it more difficult to obtain an extension of time.

The Regulations now require that the Commissioner may extend an evidentiary period only if the Commissioner is satisfied that:

• the party who intended to file evidence in the 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 time  period is unable to do so, or

• there are exceptional circumstances that warrant the extension.

Exceptional circumstances are then narrowly defined as:

• a circumstances that is beyond the control of a party that prevents the party from complying with a filing requirement,
• an error or omission by the Commissioner that prevents a party complying with a filing requirement, or
• 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 under the Act.

IP Australia issued guidelines in September 2013 for obtaining an extension of time with the expectation that these guidelines would be followed strictly.

The Tred v McCarthy Decision

In this case, the Opponent filed a Notice of Opposition of 1 February 2013 and a Statement of Grounds and Particulars (SGP) on 30 April 2013; this set a deadline of 30 July 2013 for the Opponent to file the Evidence in Support.

The Applicant filed requests for further and better particulars on 9 May 2013 and 17 July 2013 to which the Opponent amended the SGP on 12 July 2013 and 30 August 2013.

The Opponent requested that the Commissioner extend the time for evidence in support of her own volition on 30 July 2013. The Delegate refused the extension of time and advised that a request for an extension of time should be filed in accordance with the Regulations.

The Opponent having not met the deadline of 30 July 2013 for filing the Evidence in Support filed a request for an extension of time on 4 September 2013. The Delegate advised that the extension would be refused unless a hearing was requested.

The issues

At the Hearing, the Opponent argued out that there were a number of extenuating circumstances that prevented filing of the Evidence in Support by the due date despite making reasonable efforts and acting promptly and diligently at all times.

The Opponent outlined a number of grounds which they believed warranted an extension of time. These grounds included:

• difficulty with identifying and retaining a Declarant (the Attorney responsible for the case ended up acting as the Declarant), and
• attending to multiple requests for further and better particulars.

In refusing the extension of time, the primary issue for the Delegate was that the Opponent had provided little precise information about their actions in preparing their Evidence in Support. On this basis the Delegate stated that they had insufficient information to satisfy themselves that the Opponent had made all reasonable effort to comply with the relevant filing requirements and had acted promptly and diligently at all times to ensure the evidence was filed in time.

The Delegate commented that when filing a request for an extension of time, the party should provide information as to:

• when certain actions were done
• how long those actions took, and
• when and for how long particular absences/lack of availability occurred.

The Delegate requires a detailed account of events in order to satisfy the Commissioner that prompt and diligent action occurred in the preparation of evidence, across the entire evidence period.

The Opponent also argued that the Delegate should consider that it is in the public interest to allow filing of evidence in support, and therefore the extension of time provisions should be interpreted flexibly. The Delegate disagreed stating that broad assertions of public interest cannot be used to sweep aside the words of the regulation, and commented that the amendment to the extension of time provisions were for the purpose of speeding up oppositions.

The Delegate pointed out that the new law clearly limits when the remedy of an extension of time will be available, and it is not permissible to read those limitations out of the provision.

The deadline for filing Evidence in Support is based on the filing date of the Statement of Grounds and Particulars. The directions for further and better particulars do not have any effect on the deadline.

Thus it seems that the Patent Office has adopted a very hard-line approach.

1. TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 (11 November 2013)