Patent opposition strategy – extensions of time for evidence

Those involved in patent oppositions following the ‘Raising the Bar’ amendments to the Australian Patent Act will be well aware that extensions of time for filing evidence are appreciably harder to get, particularly compared with the previous system. It’s fair to say that most practitioners are (or should be) operating under the presumption that their evidence is to be filed within the prescribed time period, and that extensions of time are generally not available, or are, at least, much harder to obtain.

However, we now have available some test cases which provide good guidance on how such extensions might be obtained.

In brief, extensions of time to file opposition evidence are difficult to get. The Regulation 5.9 extension provisions have been drafted to make this so, and have have been considered by the Commissioner in TRED Design Pty Ltd v Julie-Anne McCarthy & Bradley McCarthy (TRED); Merial Limited v Novartis AG (Merial) and Fonterra Co-operative Group Limited v Meiji Dairies Corporation (Fonterra). In each of these, the principles applied are to ask the following:

  1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
  2. Was the failure to file the evidence in time despite the party acting promptly and diligently at all times to ensure the evidence is filed in time?
  3. Were there exceptional circumstances that warrant the extension?

An extension of time can only be granted if the Delegate is satisfied that the answer to both questions one and two are yes, or if the answer to question three is yes. Fonterra affirms that this is an onerous test.

Reasonable Efforts’

‘Reasonableness’ relates to conduct over the whole of the opposition and not just the current evidence stage. Practitioners should not file their extension application in the isolation of the current evidentiary period. This requirement necessitates demonstration that they have been on top of the opposition from the start. For example, a party requesting an extension of time would be advised to at least be able to demonstrate they have already retained and appropriately briefed expert witness(es) and ideally have also filed part preliminary evidence, perhaps in the form of an assessment of the general state of the art and problems known to the art before the priority date.

‘Prompt and Diligent’

‘Promptly and diligently’ is more relevant to the current evidentiary period. The applicant for the extension ideally must show a detailed account of events, demonstrating continuous progress towards preparation of the evidence. A progress diary could be useful since gaps in activity towards preparation of evidence are not looked favourably upon and generally must be explained. Reasons for delay so far found to be unacceptable include:

  • late engagement of expert witness (e.g. only at commencement of evidentiary period);
  • a holiday period falling within evidentiary period
  • the other party obtaining extensions (even if under old provisions);
  • attorney being on leave during evidentiary period;
  • concentrating efforts on amendments in lieu of any effort to prepare evidence[i].

‘Reasonable efforts’ and ‘promptness and diligence’ must be demonstrated as a precondition to grant of the extension (unless exceptional circumstances can be shown). It is only once these preconditions are met, that other matters such as public interest and the interest of the parties may be considered.

‘Exceptional circumstances’

TRED indicates that ‘exceptional circumstances’ are: ‘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.’

Practitioners cannot rely on advice received from a representative of IPAustralia as an ‘exceptional circumstance’. Fonterra states that ‘It is clearly not outside the control of practitioners to know the law that applies to extensions of time…’

Of real interest, ‘exceptional circumstances’ might arise if the applicant for the extension files amendments during the evidentiary period. This very situation has very recently been considered and gives some guidance on what ‘exceptional circumstances’ might be.

In this matter, the Applicant filed claim amendments one day before their deadline for filing evidence in support, simultaneously requesting a stay in the opposition proceedings and a suspension of the evidentiary period. No evidence was filed. The Delegate of the Commissioner indicated some weeks later that the opposition would be stayed, subject to the Applicant obtaining an extension of time to bridge the intervening period from the due date for filing evidence. The Delegate at the time suggested that an extension of time would be required to the point where an actual direction to stay proceedings was issued. That is, that the direction to stay proceedings could only be issued during an active evidence period. However, this was held not to be the case and it was instead found that the relevant date was the date that the request for the stay was made.

Thus, despite the Applicant very clearly being found not to have demonstrated ‘prompt and diligent’ action towards preparation of evidence (no evidence was filed; all efforts appeared to have been directed towards preparation of the amendments and it was unclear as to how much attention was given to collection of evidence), the Applicant had a win. The circumstances of this case were deemed unusual in that a Delegate had already decided that the opposition be stayed.

An exceptional circumstance anticipated by the legislation is ‘an order of the court, or a direction by the Commissioner, that the opposition be stayed…’ On this basis, the extension was allowed.

This is a significant decision for practitioners as it has identified one potential ground that can perhaps be relied on as an ‘exceptional circumstance’. That is, the proposing of amendments during an evidentiary term (including an extended period) which justify a stay in the opposition proceedings, is an exceptional circumstance and compliance with the onerous requirements of regulation 5.9(2)(a) is not required.

Arguably, this identifies a potential ‘get out of jail free’ card for Applicants in an opposition who wish for an extension of time, yet who have not met the ‘reasonable efforts’ and/or ‘prompt and diligent’ requirements in their evidence preparation: make amendments that significantly alter the scope of the opposition and request a stay in the opposition. The amendments and request for stay can apparently be filed right up to the deadline for filing evidence. Though an undoubtedly risky approach, since nobody should assume that a stay will be granted (and any extension applied for after a stay is lifted will require the party to have demonstrated acting promptly and diligently at all times), it has nevertheless been tried and now tested and may offer practitioners some form of armor against the pointy stick of these new extension of time requirements.