7.11.3.1 Extensions under Reg 5.10(1)

Also in this Chapter:

• 7.11.3.2 Extensions under Reg 5.10(2)

Key Legislation:

Patents Act:

• s59 Opposition to grant of standard patent  

Patents Regulations:

• reg 5.8 Evidentiary periods
• reg 5.10 Notice of opposition

Note:  This information applies to oppositions commenced before 15 April 2013, provided the evidentiary period sought to be extended commenced before 15 April 2013.

Note: The regulations referred to in this section of the manual are those in force immediately before 15 April 2013.

The Commissioner may extend a prescribed period under reg 5.10(1) on his or her own motion, or on the application of a party.  Before deciding to extend a prescribed period under this regulation, the Commissioner will have regard to the delay arising in the proceedings by such an extension, when considering whether an extension is appropriate in all the circumstances in accordance with reg 5.10(5).

Applications for extension under reg 5.10(1) should normally be made at an early stage of the prescribed period sought to be extended, thus allowing the Commissioner time to consider the application before the period expires.  Thus, for example, an application to extend a 3 month time period prescribed in reg 5.8 should be filed within the first month of that period.

Where a party applies for a directions hearing seeking a determination that a prescribed period be extended under reg 5.10(1)(b), the Commissioner may exercise a broad discretion if the extension is sought at an early stage in the opposition.  The party seeking the extension must establish or provide good reasons why the prescribed time for doing the particular action should be extended under the provisions of reg 5.10(1)(b).

Where a party applies for a directions hearing other than at an early stage in the opposition, the Commissioner may exercise his or her discretion under reg 5.10(1)(b) only if unusual circumstances, or circumstances beyond the control of the party and its declarants, are established.  Some examples of such circumstances are:

• where a current court action in Australia may directly affect the opposition;
• in some circumstances where a statement of grounds or particulars has been amended; or
• where amendments to an opposed specification (sec 59 opposition) are being considered.

In this context, circumstances such as unavailability of experts and declarants, pressure of work, mail delays and the like will not normally be considered as unusual circumstances.

If a period is extended under this regulation, then any further extension of the period, considered later also under reg 5.10(1), will only be granted where exceptional, unforeseen circumstances occurred after the initial grant.

An application made under reg 5.10(1) and refused by the delegate, may be converted and reconsidered under reg 5.10(2), for example at a directions hearing. (see 7.11.3.2 Extensions under Reg 5.10(2)).