The Patent Office remains committed to ensuring that patent opposition proceedings are handled in a manner that resolves opposition disputes quickly and inexpensively, whilst still ensuring the public interests are being met. To this end, the Patent Office is carefully considering requests for extensions of time to file opposition evidence so as to avoid unnecessary delays. Extension requests will be refused where the proper grounds are not made out.
The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced on 15 April 2013, and significantly amended the basis upon which extensions of time for serving evidence in patent opposition proceedings could be obtained. Extension of time requests for serving evidence are governed by regulation 5.9. Sub-regulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i) has made all reasonable efforts to comply with all relevant filing requirements under this Chapter;
(ii) despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so,
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined as including:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement;
(c) 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.
In TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy  APO 57, the Delegate stated that these specified exceptional circumstances ‘give some guide to the other situations that would be regarded as exceptional circumstances: 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.’1 It is interesting to note that the Patents Delegate reiterated that ‘loss of an expert is not an exceptional circumstance.’2
In Merial Limited v Novartis AG  APO 65 (5 December 2013), the Deputy Commissioner noted that the requirement under 5.9(2)(a)(i) was intended to ‘import a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings rather than its compliance with the particular evidentiary period in question’. More recently,
in Merial Limited v Norbrook Laboratories Limited  APO 56 (24 August 2015), the Delegate confirmed this approach and further commented that the issue of whether actions were ‘prompt and diligent also include matters of reasonableness.’3 Significantly, ‘the question of whether a party has been prompt and diligent at all times is assessed by looking at the behaviour of the party as a whole.’4 To this end, consideration will be given to matters such as when experts were identified and engaged, and when evidence preparation commenced. Where a two part strategy for obtaining expert evidence is used, for example a first stage to obtain evidence of common general knowledge and a second stage to obtain evidence on inventiveness, such a strategy must be carried out in a prompt and diligent manner.
The Delegate also made it clear that when considering whether a party has acted promptly and diligently, the volume of evidence to be considered by the party is ‘clearly a relevant consideration’.5 Further, where an amendment to the Statement of Grounds of Particulars has been made, then it would cause inconvenience to the applicant and potential delay. These are relevant considerations to the question of the reasonableness of the activities of the applicant in preparing evidence.
Where a party seeks to rely on exceptional circumstances as the basis for an extension request, it should be noted that the Delegate has clearly stated that large volumes of evidence in support, an unusually high number of experts giving evidence in support and an unusually large volume of prior art included in the evidence in support are not exceptional circumstances. To the contrary, these matters directly relate to the evidentiary process and ‘this represents the context against which the preparation of evidence is understood’.7
In summary, applicants and opponents must be mindful to act promptly and diligently during every step of an opposition proceeding. If an extension of time is required, the Delegate of the Commissioner will consider all of the actions of the requesting party. An extension will only be granted where the requestor has acted promptly and diligently throughout the proceedings and all reasonable efforts have been made to meet the relevant deadline. If the requestor seeks to rely on exceptional circumstances as the basis for an extension request, then the requestor must ensure that such circumstances fall outside the normal evidentiary process and outside of their control.