Time and Tide Waits For No One – Especially When the Bar is Raised

11 years ago

The “Raising the Bar” amendments made substantial changes to the Patents Regulations 1991 (Cth) in so far as they relate to the conduct of patent oppositions including the regulations relevant to seeking an extension of time in which to file evidence. Under the previous regime, multiple extensions of time were routinely obtained. As the recent Patent Office decision in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 illustrates, extensions will now be far more difficult to obtain.

The decision confirms that under the new regulations an extension of time to file evidence 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.

Further, the decision recognises that the intention behind the amendment of the regulations in relation to extensions of time was to make obtaining such extension 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.

It appears 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.