Instructions not received – how hard should we follow up?


The Australian Patent system is relatively forgiving in terms of missed deadlines.  The Patents Act provides extensions of time for complying with most deadlines, provided that a genuine error or extenuating circumstances can be demonstrated.  The extensions are at the discretion of IP Australia, which is generally pragmatic in their acceptance of the fact that mistakes do happen.

However, there are a small number of deadlines that are specifically excluded from the general extension of time provisions.  Perhaps most significantly, the general extension of time provisions exclude the  deadline for filing evidence during patent oppositions.  Rather, in order to extend an evidentiary period in an opposition, the party seeking the extension must be able to demonstrate that either a) they made all reasonable efforts to comply with all relevant filing requirements, and have been unable to file their evidence despite acting promptly and diligently to ensure it is filed in time; or b) there are exceptional circumstances that warrant the extension.

In general, requests for extensions falling under the “despite all reasonable efforts” limb of the test receive little sympathy from the IP Australia if they consider there has been any unexplained delay at any stage during the evidentiary process.  A delay in identifying or engaging an expert or settling the expert evidence are likely to fail the test for appropriate diligence.

Most Australian attorneys engaged in opposition work find themselves in the squeeze between IP Australia, who appear determined that the parties must complete their evidence in the minimum allotted time, and independent expert witnesses who have multiple competing priorities for their time.

The “exceptional circumstances” test requires a) a Court order or direction from the Commissioner to stay the proceedings, b) an error or omission by the Commissioner that prevents a party from filing the evidence or c) a circumstance beyond the control of a party that prevents them from filing evidence.

Previous decisions by the Commissioner have ruled that unavailability of experts due to leave, work commitments, personal commitments or short illness should be expected and is not exceptional.

Exceptional circumstances were recently tested in QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 (22 June 2021). In that case, the patent applicant had failed to meet their original deadline for filing their evidence in reply, but were ultimately successful in demonstrating that exceptional circumstances did apply, and an extension to file that evidence was justified.

In this case, the patent applicant was located in the US, and their US attorney only became aware of the existence of an opposition to their application one month before their evidence in answer was due.  That is, the US attorney was unaware of the filing of a notice of opposition, unaware of the opponents filing their statement of grounds and particulars  (3 months into the opposition), and unaware of the filing of the opponent’s evidence in support filed (6 months into the opposition).  Two of the three months of the applicant’s window for filing evidence in answer had elapsed before the applicant first became aware of the opposition.  In short, the opposition had progressed for eight months without the applicant’s knowledge.

All of the opposition correspondence was duly received by the Australian attorney and passed on to the applicant’s US attorney, however, unbeknownst to all parties, the US attorney’s  spam filter was diligently capturing and destroying the relevant correspondence upon receipt.  Notably, no bounce back was received by the Australian attorney.  This capture and destruction of the emails only appears to have been detected by good fortune when, for some reason, a reminder email from the Australian attorney did indeed manage to avoid the US attorney’s spam filter.

The Applicant initially requested an extension of time to file their evidence which was refused by the  opposition division.  The opposition division  acknowledged that the email communication failure was unintended, but overall, they considered that the applicant’s attorney did not act reasonably, promptly and diligently because they did not follow up on emails that were not acknowledged by the client.  In refusing the request for an extension, the opposition division said “It is reasonable to believe that the information associated with those emails would generally elicit a response and the failure to do so, especially over an extended period of time and in view of the strict deadlines in opposition matters, is quite remarkable and failing to follow up on the lack of response does not appear to be commensurate with acting reasonably or promptly and diligently.” 

The initial refusal noted a number of points, such as the failure of the applicant to check on the grant of the patent, the US attorney’s  processes involved in  checking their spam filter was not blocking legitimate emails, and the failure of the Australian  attorney to follow up on a lack of acknowledgement of their emails.

The applicant sought a hearing on the matter, arguing that “the Senior Examiner’s proposed approach is a counsel of perfection, made with the benefit of hindsight. Email is a highly reliable, mature technology. Users are accustomed to receiving non-delivery or bounce-back messages if an email is not delivered and it is entirely reasonable to assume, as [the Australian attorneys] did, that, in the absence of receiving any non-delivery message, the email has been safely delivered to its intended recipient. That was the assumption made in the present case. It was a reasonable assumption. It is not for [the Australian attorneys] to second-guess why a client does not respond to emails or indeed why a client may not wish to defend an opposition proceeding.”

In his decision, the hearing officer sided with the patent applicant, finding that “Although with the benefit of hindsight it can be envisaged that the situation could have been avoided (such as [the Australian attorneys] making a ‘follow up’ phone call when no response was received to the emails), such speculation is beyond the realm of what was reasonably beyond the control of the parties. I consider that the emails not being received (with no indication that the email was not delivered) was beyond the control of both the sender … and receiver … of the emails.”

The decision is pleasing to those in the patent profession, who in some cases deal with hundreds of emails every day, as it demonstrates that a “perfect” practice is not the starting point for determining whether “exceptional circumstances” exist when determining whether extensions of opposition deadlines are warranted.

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