Opposition Practice

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Extensions of time for completing evidence now very difficult to obtain

Substantial changes were made to Australian patent law in April 2013. The so-called “Raising the Bar” amendments were introduced to improve the quality of Australian patent and to minimise delays in the processing of patent applications.

One of the changes involved in decreasing delays in the processing of Australian patent applications related to a change in the regulations governing extensions of time for completing evidence in opposition proceedings. An Australian patent application can be opposed by third parties following acceptance of the application. The regulations governing the opposition procedures require that a statement of grounds and particulars must be filed within 3 months of filing a notice of opposition. Evidence in support must be filed within 3 months of the date of filing the statement of grounds and particulars.

The regulations also include provisions to extend the time for completing evidence. Before the changes made by the Raising the Bar amendments, extensions of time for completing evidence were relatively easy to obtain. However, the Raising the Bar amendments made substantial changes to the regulations governing the grant of such extensions, with the aim being to make such extensions more difficult to obtain and therefore prompting opponents to complete their evidence in a more timely fashion.

We are now starting to see the first decisions issued by the Australian Patent Office in relation to the new provisions governing extensions of time for completing evidence under the Raising the Bar amendments. In both reported decisions to date, applications seeking to extend the time for completing evidence beyond the initial three-month period were refused by the Patent Office. Although a detailed analysis of the decisions is beyond the scope of this article, it is apparent that the Australian Patent Office intends to take a hard line approach to granting extensions for completing evidence.

Thus, opponents should take the view that, barring exceptional circumstances, evidence should be completed by the initial deadlines set out in the regulations. It is recommended that opponents engage expert witnesses at a very early stage of the opposition proceedings to enable evidence in support to be completed in time.

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