While the full ramifications of the “Raising the Bar” amendments which made significant changes to the Patents Act 1990 (Cth) and the Patents Regulations 1991 (Cth) are yet to be experienced, one particular area where the impact of the changes is being felt acutely is in the conduct of patent opposition proceedings.
Under the old provisions, extensions of time could be obtained in a somewhat routine fashion, provided sufficient reasoning accompanied the request. Indeed, frequently, multiple extensions of time could be obtained by both parties. However, in accordance with the legislative intent of reducing delays in opposition proceedings, two recent decisions by the Patent Office highlight that under the new provisions extensions of time are now more difficult to obtain.
The New Regulations
The law governing extensions of time to file evidence in a patent opposition depends upon the date on which the relevant evidentiary period commenced. Where the evidentiary period commenced on or after 15 April 2013, the extension is governed by new regulation 5.9. As summarised by Commissioner’s Delegate in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd  APO 57 at , the following questions (based on Reg 5.9(2)) should be posed when assessing a request for an extension of time for filing evidence:
- 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 warrant the extension? (Our emphasis)
At  the Delegate stated:
“I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.” (Emphasis added).
Briefly, “exceptional circumstances” are inclusively defined (Reg 5.9(5)) as being: “a circumstance beyond the control of a party”, “an error or omission by the Commissioner” or “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 both Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd  APO 57 and Merial Limited v Novartis AG  APO 65, a notice of opposition was filed prior to 15 April 2013, so the oppositions were generally governed by the provisions of Chapter 5 of the regulations that applied before that date. In each case however, the requested extensions of time for filing evidence were governed by new regulation 5.9.
The McCarthy v TRED Decision (TRED)
The issues in TRED centred on the Opponent failing to meet a deadline of 30 July 2013 for filing Evidence in Support. The failure to comply with the deadline was allegedly impacted by a requirement on the Opponent to file further and better particulars. However, such requirement did not alter the deadline by which Evidence in Support was required to be filed.
A request for an extension of time was filed on 4 September 2013 (more than one month after the deadline). The Delegate considered that the supporting initiated was insufficient and advised that the extension would be refused unless a hearing was requested.
Despite providing additional information supporting assertions that the Opponent had satisfied "both" legs of the test under subregulation 5.9(2)(a), or that there existed exceptional circumstances, the information supplied by the Opponent’s attorneys was not sufficiently detailed to satisfy the Delegate.
Following the hearing, the Delegate refused the application stating that he could not be satisfied that the Opponent’s attorney:
“…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.” (Our emphasis).
It was suggested that in order to be satisfied, precise information outlining “…what was done, when it was done, how it was done, by whom it was done… covering at least the period in question, and the nature of the evidence that they are preparing” is required.
The Merial v Novartis Decision
In Merial v Novartis, the extension request at issue was in respect of an already extended period for filing evidence in answer (which was not refused by the Commissioner or opposed by the Opponent). After a Delegate giving an indication the second extension would also be granted, the Opponent objected and requested the hearing.
The issues centred on the failure by Novartis to complete their Evidence in Answer within the first extended period. Briefly, on account of unavailability of their expert witness (due to an overseas holiday, other work commitments and even moving house) for certain periods of time, the Applicant was unable to complete their evidence (which comprised a total of 6 declarations by the expert, two of which were filed after the period had expired).
In refusing the extension the Hearing Officer referred to the TRED decision and the analysis to be applied (as outlined above). It was determined that the “first leg” of the test in subregulation 5.9(2)(a) did not need to be considered. Nevertheless, the delegate did note that this leg of the test “is 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…” (Our emphasis).
Accordingly, assessment was made with respect to the “second leg” (Reg5.9(2)(a)(ii)) which Novartis was deemed to fail. Specifically, the delegate held that persevering with the chosen expert in the knowledge that he would be taking extended leave, could not be considered consistent with acting “promptly and diligently”. Moreover, in the absence of information including reasoning for choosing the expert, the plan developed for obtaining the evidence, actual difficulties encountered in obtaining the evidence and reasons for persevering with the same expert, the Delegate was not satisfied that the Applicant had acted promptly and diligently at all times.
Decisions of the Commissioner are appealable to the Federal Court and it remains to be seen whether the strict approach adopted by the Office will be tempered following a judicial review. However, in the meantime, aside from always acting promptly and diligently, here are some practical suggestions for managing your oppositions:
- The onus in establishing that a requested extension is justified lies with the applicant of the request. Accordingly, the request should include detailed information such as:
- reasoning for choosing the expert
- the plan developed for obtaining the evidence;
- what was done, when it was done, how it was done, by whom it was done; and
- where delays are attributable to an expert, actual difficulties encountered in obtaining the evidence and reasons for persevering with the same expert.
- Consider requesting an extension ahead of time such that in the event of refusal, any evidence, even if incomplete, may be considered.
- Continue to progress the preparation of evidence even if the parties have commenced negotiations to settlement of the opposition.