7.11.2 Extensions of Time - Reg 5.9

Also in this Chapter:

• 7.11.1 Extensions of Time - Section 223
• 7.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)
• 7.11.4 Restoration of the Right of Priority Under the PCT

Sub-chapters:

• 7.11.2.1 Requesting an Extension of Time
• 7.11.2.2 Application of the Law
• 7.11.2.3 Justification for the Extension
• 7.11.2.4 Discretionary Matters
• 7.11.2.5 Period of an Extension
• 7.11.2.6 A Hearing in Relation to an Extension
• 7.11.2.7 Parties Involved in Negotiations
• 7.11.2.8 Review of a Decision to Grant or Refuse an Extension
• 7.11.2.9 ＂Out of Time＂ Evidence​​​​​​​

Key Legislation:

Patents Regulations:

• reg 5.8 Evidentiary periods
• reg 5.9 Extension of time for filing evidence
• reg 5.10 Notice of opposition
• reg 5.12 Practice and procedure
• reg 5.17 Dismissal on request
• reg 5.22 Commissioner may give directions
• reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)
• Chapter 5 Opposition
• Schedule 7 Fees

Related Chapters:

• 7.3.1 Directions in Opposition Proceedings

Note: This information applies to oppositions commenced on or after 15 April 2013 and oppositions commenced before 15 April 2013 provided an evidentiary period commenced on or after 15 April 2013.

In this topic:

Relevant Legislation

The Regulations

Introduction

What periods can be extended under reg 5.9?​​​​​​​

Relevant Legislation

The Regulations

Introduction

The Commissioner has always had the power to manage time periods during patent oppositions.  Prior to 15 April 2013, reg 5.10 gave the Commissioner the power to extend time if “reasonably satisfied” that the extension was appropriate in all the circumstances.  However, the law developed in such a way as to significantly narrow the Commissioner's discretion to disallow extensions.

Amendments to the Patents Regulations which came into effect on 15 April 2013 introduced a new Chapter 5.  Under this new regime extensions are provided for by reg 5.9, which introduces a new test for whether an extension of time is justified.

Under reg 5.9, the Commissioner may extend the time to file evidence in support, answer or reply, in a substantive opposition, either on the request of a party in writing, or on the Commissioner’s own initiative.

Reg 5.9 also applies to extend an evidentiary period in an opposition commenced before 15 April 2013, providing the evidentiary period commenced on or after 15 April 2013 (reg 5.9, subject to reg 23.36(2) item 2).

What periods can be extended under reg 5.9?

Regulation 5.9 allows the Commissioner to extend the time for an "evidentiary period" specified in reg 5.8 as in force either immediately before, or on or after 15 April 2013 (see reg 23.36(2) item 2).

Consequently, the time for filing evidence in support, evidence in answer or evidence in reply can be extended under reg 5.9 in the following oppositions:

• substantive oppositions commenced on or after 15 April 2013;
• any opposition commenced before 15 April 2013, provided the evidentiary period commenced on or after 15 April 2013.

Regulation 5.9 cannot be used to extend the time for requesting dismissal of an opposition (under reg 5.17).

Procedural oppositions commenced on or after 15 April 2013 do not have fixed evidentiary periods under reg 5.8, so these periods cannot be extended under reg 5.9.  Instead, these matters are managed by directions under regs 5.12 or 5.22 (see 7.3.1 Directions in Opposition Proceedings).