Patent Extensions of Time


The Raising the Bar amendments to the Australian Patents Act and Regulations has made it much more difficult to secure an extension of time for filing evidence in Australian patent oppositions.  In the first decision after the Raising the Bar amendments came into effect, in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 (issued on Monday), the Australian Patent Office refused to grant an extension request.

When considering whether or not the extension request should be granted, the following questions were asked:

  1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
  2. 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?
  3. Were there exceptional circumstances that warrant the extension?

The extension of time request may be granted only if the Office is satisfied that the answer to questions 1 and 2 is YES, or that the answer to question 3 is YES.  If the Office is satisfied that the answers to any of these questions are YES, then the next step is to consider whether there are any discretionary reasons why the extension should not be granted.

To satisfy the requirements under questions 1 and 2, it is necessary for the applicant of the extension of time request to provide a detailed account of the actions taken throughout the preparation of their evidence.  In this regard, the decision stated “An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.”  In this decision the Office concluded that the information available to the Office “does not support the conclusion that the attorney for TRED [the applicant of the extension request] has acted reasonably”.

In relation to question 3, the scope of what constitutes “exceptional circumstances” is relatively narrow.  The Patent Office Manual on this topic states “Circumstances that normally arise during the preparation of evidence cannot be regarded as exceptional.  For instance, unavailability of experts for periods of time due to leave, work commitments, personal commitments or even short periods of illness are not exceptional.”  In this decision the Office concluded that none of the circumstances argued by the attorney for TRED were exceptional.

In light of the above:

  1. It is best to assume that it may not be possible to obtain an extension of time for preparing evidence in opposition proceedings, and the preparation of evidence must be planned accordingly.
  2. There should be continual activity towards preparing the evidence throughout the evidentiary period.  This way, if it is necessary to request an extension of time to prepare the evidence it may be possible to provide sufficient information to satisfy the Office that the extension request should be granted (i.e. the answers to questions 1 and 2 above are YES).
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