Period of Extensions to be Granted

Date Published

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.

Chapter 5 of the Regs, as in force immediately before 15 April 2013, provides a procedural framework whereby opposition matters can be expeditiously determined. This needs to be remembered when extensions of time are considered under reg 5.10 as in force immediately before 15 April 2013.

As a general proposition, the periods prescribed in Chapter 5 of the Regs should normally be sufficient to enable the completion of the relevant actions.  Thus parties to an opposition should not assume that any extension of time will be granted.  Furthermore, in providing reasons to justify an extension, a party should demonstrate that the circumstances giving rise to the need for an extension are not normal; for example, demonstrate that delays that have resulted in the need for an extension are both unexpected and reasonable.

Where an extension is sought, the period of time granted should be realistic when compared to the prescribed periods.  For example, where reg 5.8 as in force immediately before 15 April 2013, allows evidence to be filed within three months, an extension for more than three months would seem unrealistic in the context of the legislation.  In general, where extensions are appropriate in the circumstances, the period of extension granted should not adversely affect the expeditious resolution of the opposition.

Any extension of time that the Commissioner grants will only be for the purposes (as well as for any steps or actions consequential to these) for which the extension was applied and the Commissioner found to be justified.  To this end, the Commissioner will, where necessary, grant the extension of time subject to terms.  When the Commissioner intends to impose terms, he or she will advise the applicant and request their agreement or comments on the proposed terms.

In a situation where the Commissioner considers that an application for an extension of time is not justified, but that there may be reason to conclude that some evidence may be available for service, Burchett J. observed in Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243 that:

"... even where an application for a particular period ... is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by Regulation 5.10, should always consider whether some short period ought to be allowed, so that an applicant who may have assumed some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available.  I am speaking of a case such as the present, where it was clear the applicant might well have a quantity of evidence ready to file, although its desire was to lodge all the evidence at the same time and in conjunction with the presentation of evidence in the Federal Court Proceedings."

Consequently the Commissioner will consider allowing, where an extension of time is otherwise unjustified, a short extension of time to enable service of "evidence that may be immediately available" to conclude the particular evidence stage.

In effect this may mean that the Commissioner will consider allowing:

  • where the requested extension period has not elapsed at the date of the Commissioner's decision (whether communicated by letter or by written decision), an extension of time to no more than 5 working days from the date of the decision (5 days should normally be more than adequate); or
  • where the requested extension period has already elapsed prior to the Commissioner's decision being issued and evidence has already been filed and served in that period, an extension of time to the date of service of that evidence.

The fact that the evidence is immediately at hand does not impose a duty of the Commissioner to allow an extension of time in opposition proceedings to admit the evidence (see A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213).