On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) commenced with much fanfare.
The RTB regulations made significant changes in relation to patent oppositions, principally with the aim of resolving proceedings faster. The reforms recognised that under the previous regime, opposition proceedings often took several (and sometimes many) years to resolve and that this was not in the public (or parties’) interest.
Ten years on, we examine a few key procedural reforms and ask whether the changes have had the desired effect.
Split between substantive and procedural oppositions
One measure to streamline patent oppositions was to separately manage procedural and substantive proceedings. Substantive opposition proceedings are for challenges to the validity of a patent application pre-grant, certification of an innovation patent and patent term extensions. Procedural oppositions are typically used to challenge the allowance of amendment under section 104 or extensions of time.
At a high level, the reform was instantly effective in reducing the time taken to resolve procedural oppositions. In addition to tightening the time for the parties to file a notice of opposition and statement of grounds and particulars, the RTB Regulations allowed the Commission to decide the procedure to be followed, including the need and timing for evidence, on a case-by-case basis.
The resolution of procedural oppositions faster and more cost-effectively is a win for parties and the public interest.
Extensions of time to file evidence
The evidentiary periods for substantive patent oppositions post Raising the Bar have remained largely the same. The most impactful reform, however, or at least the one resulting in the most sleepless nights for patent attorneys, was the change to the Regulations for obtaining extensions of time to file evidence.
Before the reforms, extensions of time were relatively simple to obtain and required minimal explanation. As noted in the Explanatory Statement to the RTB Regulations[1]:
A major cause of protracted opposition proceedings is extensions to the various time periods for providing evidence. The law has developed in such a way as to significantly narrow the Commissioner’s discretion to disallow extensions. As a result, oppositions are normally subject to multiple extensions of time and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.
The RTB regulations made it much more difficult to secure extensions of time for filing evidence. Relevantly, extensions are governed by regulation 5.9, with sub-regulation 5.9(2) providing:
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; and
(ii) despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances were defined in the regulations.
These regulations were first considered by the Patent Office in late 2013, in two decisions which outlined the following questions to be asked when applying the provisions, and which continue to be applied by the Commissioner:
- Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
- Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
- Were there exceptional circumstances that warranted the extension?
In something of an overcorrection, the Patent Office strictly applied the Regulations from the outset – refusing to grant the vast majority of extension applications. It became clear early on that exceptional circumstances are matters outside the normal evidentiary process and outside the party’s control, where it would be unreasonable to insist on a party filing their evidence.
Practically, this means reasonably foreseeable difficulties need to be mitigated by the parties. Difficulties retaining or losing an expert or issues with an expert’s availability are not exceptional circumstances[2]. Similarly, attempts to settle the proceedings are irrelevant.
Notably, the RTB Regulations imported a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings rather than simply its compliance with the particular evidentiary period in question.
If an extension of time is required, the requesting party needs to provide comprehensive information detailing all its actions, even if this results in a potential waiver of attorney-client privilege[3]. Many requests in the intervening years have failed due to a lack of information.
While early decisions granting an extension were rare[4] and the bar remains a high one to clear, the Commissioner’s recent application of the Regulations suggests that extensions of time remain available 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[5].
Has it worked?
In short, yes. Most substantive patent oppositions are now ready for hearing within a year, and a decision generally issues within 18 months. Procedural oppositions are resolved even quicker. Patent oppositions are more efficient and cost-effective as a result of the new regulations.
The knowledge that an extension will be challenging to obtain, and the fact that the Commissioner does not have power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time has resulted in parties acting with more urgency.
Indeed, the most significant barrier to resolving patent oppositions more quickly now rests with the Patent Office and the number and availability of Hearings Officers.
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[1] Explanatory Statement to F2013L00479 page 18-19
[2] See for example Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57, Merial Limited v Norbrook Laboratories Limited [2015] APO 56
[3] see Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21
[4] see for example Fugro Airborne Surveys Corp v Geotech Airborne Limited [2014] APO 23
[5] See for example Australian Patent Office decisions granting an extension of time: SHL Medical AG – Switzerland v Sanofi-Aventis Deutschland GmbH [2023] APO 12 (17 February 2023), CSR Building Products Limited v United States Gypsum Company [2019] APO 15 (29 March 2019), UON Pty Ltd v Taranis Power Group Pty Ltd [2019] APO 6 (5 February 2019).
