Extensions of time – a new era


Any person may oppose the grant of a patent on an application by filing a Notice of Opposition within three months of the advertisement of acceptance of the application. If an application is opposed, both the applicant and the opponent are given the opportunity to lodge evidence before the matter is heard before the Patent Office.

The filing of a Notice of Opposition sets a series of deadlines by which each party must lodge their evidence. In the past, it was quite common for a party to obtain an extension of time of a deadline for filing evidence where needed. However, since the changes in Australian patent law that came into effect on 15 April 2013, new, stricter rules are being applied to parties seeking extensions of time.  The new rules state:

(1) The Commissioner may extend an evidentiary period mentioned in regulation 5.8:

(a) if requested in writing by a party; or

(b) on the Commissioner’s own initiative.

(2) 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.

Obviously, the outcome of the new, stricter rules being applied is that the requirements to obtain an extension of time are much more onerous resulting in many requests being rejected by the Patent Office that would have been readily allowed prior to the law change.  One such example, which proceeded to a hearing before the Office, is Merial Limited v Novartis AG [2013] APO 65 (5 December 2013) [“Merial”].

In Merial, the patent applicant, Novartis AG, sought an extension of time of two months (it had already obtained a three-month extension of time under the old law).  The additional extension was required to enable Novartis AG to file a fifth and final declaration. However, Merial Limited, the opponent, opposed the request for an extension of time.  In the end, the Office denied the request for an extension of time on the basis that Novartis AG failed to make “all reasonable efforts to comply with all relevant filing requirements” and had not acted “promptly and diligently at all times to ensure the appropriate evidence is filed within the period”.

During the hearing, it came to light that the reason for the additional extension of time was that the declarant was overseas on vacation for nearly two months.  On this point, the Commissioner of Patents commented:

“Knowing that the expert would not be available from July and likely that an extension of time would be required it would have been reasonable for another expert to be considered or, if Dr Rowe was the only reasonable option and if circumstances allowed, making better use of the expert during his absence from Australia or on his return.”

The take home message (until one of the many Patent Office decisions is appealed and reviewed outside of the Patent Office) is that parties seeking an extension of time will need to be able to demonstrate that at all times they have acted promptly and diligently and have made all reasonable efforts to meet the deadline for which the extension is being sought.  This may be assisted by the keeping of careful records evidencing their efforts (and not allowing your expert witnesses to go on vacation). Of course, the best course of action is not to be reliant on obtaining an extension of time.

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