The IP Laws Amendment (Raising the Bar) Act 2012 made substantial changes to the Patents Regulations 1991 (Cth) relating to the conduct of patent oppositions, including the regulations relevant to seeking an extension of time (‘EoT’) in which to file evidence. Under the previous regime, multiple extensions of time were routinely obtained. A number of recent decisions provide guidance as to how the new EoT provisions will be applied, and suggest extensions will now be more difficult to obtain.
Extension applications must be supported by detailed information
The first Patent Office decision to give substantive consideration to the new EoT provisions was Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd  APO 57 (‘TRED’).
TRED confirmed that under the new regulations, an EoT may only be granted in two situations:
a) where the party has made all reasonable efforts to comply with the time period for filing the evidence, and despite acting promptly and diligently has been unable to meet that time period; or
b) there are exceptional circumstances that warrant the extension.
If neither of these considerations are satisfied, an EoT may not be granted regardless of any consideration of the public interest. Further, TRED recognised that the intention behind the amendment of the regulations in relation to EoTs was to make obtaining such extensions more difficult.
In this particular case, the opponent was refused an extension because despite assertions that ‘the opponent has acted promptly and diligently at all times’, the information it provided in support of the application included insufficient detail about what steps were actually taken. The Delegate concluded:
‘Ultimately, this matter turns on whether I am satisfied that Mr Anderson made all reasonable efforts to comply with all relevant filing requirements, and acted promptly and diligently at all times to ensure the evidence was filed in time, based solely on his assertion that he did and without sufficient evidence to enable me to form an independent opinion that that is correct. I am not satisfied on the basis of the information before me.’
TRED provided an early indication that a party seeking an extension will need to provide detailed information about their attempts to comply with the evidence deadline including information as to ‘when’ certain actions were done, ‘how long’ those actions took, and ‘when and for how long’ absences/lack of availability occurred.|
All conduct is potentially relevant
TRED was then applied in Merial Limited v Novartis AG  APO 65 (‘Merial’). Merial concerned a request for an EoT following an earlier granted request. In deciding that Novartis’ EoT application should be refused, the Delegate noted that the new regulations import a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings. Further, when assessing whether a party has ‘acted promptly and diligently at all times to ensure the appropriate evidence is filed’, consideration should be given to the party’s conduct throughout the entire evidentiary period, not just during the previous period of extension.
It was also noted in Merial that for oppositions commenced prior to 15 April 2013 there remains the possibility of filing further evidence, and in the subsequent decision in Merial Limited v Novartis AG  APO 19, Novartis’ application to file further evidence was allowed.
Reasonably foreseeable difficulties should be mitigated
Further guidance as to application of the new EoT provisions was provided in Shelford Services Pty Limited v Baylor Research Institute  APO 20 (‘Shelford’).
In Shelford, the patent applicant sought an extension of the deadline for filing its evidence in answer on the basis that it had encountered difficulties in retaining suitable expert witnesses followed by limited 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 professional 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 highlighted 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.
Potential waiver of privilege does not excuse inadequate information
In Sportingbet Australia v Tabcorp International Pty Ltd  APO 21, it was held that the potential for waiver of attorney-client privilege will not excuse any inadequacy in information provided to the Commissioner in support of an EoT application.
Tabcorp, the patent applicant, sought an extension 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.
Extensions are not impossible to obtain
The new EoT provisions clearly represent a significant change in opposition practice. However, as the decision in Fugro Airborne Surveys Corp v Geotech Airborne Limited  APO 23 demonstrates, EoT’s remain available, even where they are opposed, provided a party has made reasonable efforts to prepare its evidence and equally importantly provided adequate information to the Commissioner to demonstrate that it has done so.
Ultimately the new provisions should mean that both patent applicants and opponents can look forward to more efficient and cost effective patent oppositions.
Adrian Crooks BEng(Civil)(Hons) LLB LLM FIPTA is a Lawyer and Patent and Trade Marks Attorney representing clients in a range of patent infringement matters, particularly in relation to engineering technologies. Adrian also regularly acts for Australian and overseas clients in opposition proceedings before the Patent Office.