The Australian Patent Office is applying strict new requirements to obtain an extension of time to file evidence in an opposition proceeding. The effect of this change has been mitigated for some parties, as they have had the excluded evidence admitted instead as ‘further evidence’. This option to file further evidence is however only available temporarily, for oppositions commenced before 15 April 2013.
The criteria to be met to obtain an extension of time for filing evidence was amended to include mandatory requirements in April 2013. The effect of these changes was that failure to make all reasonable efforts to meet the deadlines and failure to act promptly and diligently at all times will result in a requested extension being refused. Several recent decisions refused to admit relevant and significant evidence into an opposition. Two examples are discussed in our articles Patent Office adopts hard line on requests for extensions of time in patent oppositions and New paradigm in Australian patent oppositions.
The legislative changes also abolished the ability to file further evidence, but only in relation to oppositions commenced on or after 15 April 2013. Some oppositions therefore had the new mandatory requirements for extensions of time and the option to file further evidence. Although the Patent Office may arguably have been able to reconsider the test for further evidence in light of the amendments made to the Act, in decisions in April and June 20141, it applied the same generous considerations as were available under the previous law. In doing so, the Patent Office allowed evidence that had been previously excluded due to a refusal of an extension of time. This has provided an avenue for parties to have their excluded evidence considered.
For any opposition commenced on or after 15 April 2013, there is no provision to file further evidence. There is a discretionary power for the Patent Office to consult relevant documents filed outside of the normal evidentiary time frames. How the Patent Office will exercise this discretion remains to be seen. It would not appear safe for a party to rely on this provision as a failsafe, as the Patent Office has published a warning that a ‘party should not rely on further information in a document to avoid the evidentiary time frames prescribed by the regulations.’ If the document is proposed to be relied on by the Patent Office, then the parties must be given notice of this and an opportunity to give evidence or make representations about the document.
For more information on the patent opposition procedure in Australia, please click here.
1 Merial Limited v Novartis AG  APO 19, Innovia Security Pty Ltd v Visual Physics LLC  APO 39