7.11.2.4 Discretionary Matters

Also in this Chapter:

• 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
• ​​​​​​​7.11.2.5 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 5.9 Extension of time for filing evidence

Related Chapters:

• 7.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)

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.

The former reg 5.10 continues to apply to extend an evidentiary period that commenced before 15 April 2013. (See 7.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)).

Once the mandatory requirements of reg 5.9(2) have been met, there is a discretion whether to grant an extension.  This follows from the use of the term "may" in reg 5.9(1).

Considerations that would be relevant to whether to refuse an extension of time are those identified under the former law:

• the nature and significance of the evidence that is being prepared; and
• the private and public interests.

In CSIRO v BASF [2014] APO 74 the delegate identified another consideration: had the party deliberately misled the Commissioner, either by explicit statement or omission, in order to obtain an extension.

The private and public interests

The private and public interests are not relevant to whether a party has acted promptly and diligently in preparing their evidence.  The balancing of private and public interests may be relevant to the exercise of discretion.