Extension of Time to Serve Evidence – No Lay Down Misère

The potential for waiver of attorney-client privilege will not excuse any inadequacy in information provided to the Commissioner in support of an application for an extension of time to file evidence according to the decision in Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21.

Tabcorp, the patent applicant, sought an extension in which to file its evidence in answer and while the Commissioner was initially satisfied that an extension was justified, Sportingbet opposed the application.

Sportingbet criticised the extent to which Tabcorp had provided details of the work performed in order to show that it had acted promptly and diligently in the preparation of its evidence. In response, Tabcorp submitted that it would be contrary to the intent and purpose of section 200(2A) of the Patents Act 1990 (which relates to attorney-client privilege) to construe Regulation 5.9 as requiring disclosure of details of the work performed.

On this point, the delegate stated that:

details of the work carried out by a party may need to be disclosed to the Commissioner where it is relevant to establishing that the party seeking an extension of an evidentiary period has been prompt, diligent and reasonable for the purposes of subreg 5.9(2). As indicated above, a party may provide the necessary information in the manner of their choice. Where a party considers that some information is confidential, they may redact sensitive details, or summarise the information. However, they cannot claim that because the relevant information is confidential they do not need to satisfy subreg 5.9(2)

The delegate also rejected the submission that the Spring Racing Carnival, which coincided with part of the evidentiary period, was an exceptional circumstance despite submissions as to its impact on the resources of Tabcorp.

The delegate concluded that Tabcorp had not satisfied the requirements of Regulation 5.9 and as such the extension must be refused.

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.