As you may be aware from previous blogs, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) (the “Amendment Regulation”), which commenced on 15 April 2013, “raised the bar” significantly for parties seeking extensions during opposition proceedings.
The level of detail now required to be submitted by a party to obtain an extension of time was recently exemplified in Osmose New Zealand v Zelam Limited [2014] APO 49 where Zelam’s application for an extension of time to file evidence in answer was successful. In this case, the Office considered that the comments and detailed Schedule of Events provided by Zelam were sufficient for the Office to conclude that Zelam had acted promptly and diligently and should be granted a one month extension of time pursuant to regulation 5.9(2)(a) of the Amendment Regulation.
The Osmose decision contrasts with Clarus Therapeutics, Inc. v Lipocine, Inc. [2014] APO 50 where Clarus’ request for an extension of time to file evidence in support was not sufficiently justified. In particular, the Office found that there was a lack of information about (i) the evidence that would be obtained from the Australian and US experts during an extended period; (ii) what efforts were made to obtain this evidence to ensure that it could be filed within the statutory period; and (iii) the reasons it could not be obtained. Furthermore, it was not clear why, after a European expert witness was selected, it took five weeks for the attorneys to make contact with the witness.
Nevertheless, seeing as the Commissioner’s practices in relation to newly introduced regulation 5.9 are still developing and are unfamiliar to patent attorneys, Clarus was allowed seven days from the date of the decision to provide declaratory evidence clearly addressing the issues identified by the Commissioner together with any supporting submissions.
Although the Patent Office may not be this kind in the future when the requirements of regulation 5.9 are more developed, it is a relief to see that, under certain circumstances, extensions of time are still possible.