Extension Enabled by Esoteric Experts; but it Pays to Gaze Forward in Time

The decision in Shelford Services Pty Limited v Baylor Research Institute provides further indication of how the Australian Patent Office will apply the new “Raising the Bar” opposition extension of time provisions.

The patent applicant sought an extension of the deadline for filing its evidence in answer. The basis for the extension application essentially related to difficulties in retaining suitable expert witnesses and the availability of those witnesses to progress the evidence.

In considering the application, the Delegate noted that:

it may be reasonable for an applicant not to start work on defending an application until the evidence in support is filed. This could include the applicant waiting until the evidence in support is filed to then determine appropriate experts to seek in defending the application. The deferral of costs of this type of firm action by the applicant until the evidence in support is filed would be quite reasonable. A reasonable expectation also is that an applicant, seeking an extension of time to file evidence in answer, should nonetheless demonstrate that it had started considering or thinking about how it would defend its case at an early stage.

The applicant submitted that having regard to the field of the invention, suitable experts were difficult to locate and typically had substantial profession obligations which took priority over work relating to the opposition. Whilst accepting this, the Delegate noted that in such circumstances, “it seems the search for an expert in this area, who could be retained on notice once the evidence in support was filed, should be considered reasonably early in the process”.

Ultimately the extension was granted however the decision highlights that where potential difficulties with evidence preparation are foreseeable, a party may need to take steps to mitigate those difficulties in order to be seen to be making reasonable efforts.

BEng(Civil)(Hons) LLB LLM FIPTA

Adrian is an intellectual property lawyer who combines legal expertise with deep technological knowledge to advise Australian and international businesses in the resolution of commercial IP disputes.