3.11.2.2.1 Application of Regulation 5.9

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 3.11.3 Extensions of Time – Regulation 5.10).

In this topic:

General Principles

Under reg 5.9(2), the Commissioner may extend an evidentiary period only if the Commissioner is satisfied that:

a. the party who intended to file the evidence in the period:

i. has made all reasonable efforts to comply with all relevant filing requirements under Chapter 5; and

ii. despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or

b. there are exceptional circumstances that warrant the extension.

The construction of reg 5.9 was considered in TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 (TRED).  The delegate found that:

• whilst the two ‘legs’ of reg 5.9(2)(a) are similar, the ‘reasonable’ leg relates to ‘all relevant filing requirements’, whereas the ‘promptly and diligently’ leg relates to the period for filing ‘the appropriate evidence’  (TRED at [28]).  Thus, reasonableness relates to conduct over the whole of the opposition and not just a particular evidence stage.  Often where a person has acted reasonably, they will also have acted promptly and diligently.  
  
  The question to consider is whether a person seeking an extension satisfies each leg of the test.  Where they fail to satisfy one of the legs, an extension will not be available (in the absence of exceptional circumstances) (TRED at [28]).
• ‘the party’ means ‘party and their attorney or agent’ and therefore the actions of attorneys or agents are relevant considerations when determining whether or not to allow an extension of time (TRED at [29]).

To determine whether an extension may be granted, the following questions should be considered:

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?

An extension of time for filing evidence may only be granted if the answer to questions 1 and 2 is YES, or the answer to question 3 is YES.  Where this requirement is met, the Commissioner must then consider whether there are any discretionary reasons why the extension should not be granted (TRED at [34]-[35]).

Reasonable Efforts, Prompt and Diligent Actions

The factors to consider when determining whether a party has made all reasonable efforts are generally relevant to the question of whether the party has acted promptly and diligently (TRED at [62]).  It is also necessary to consider the whole of the evidentiary period, rather than each event that occurred during the period in isolation (TRED at [60]).

In particular, attention should be given to the actions undertaken by the party during at least the period in question.  An understanding of what was done, when it was done, how it was done and by whom it was done, and the nature of the evidence being prepared, will assist the Commissioner in deciding whether a party has made all reasonable efforts to comply with the relevant filing requirements (TRED at [40]).  

In seeking an extension of time, parties should provide sufficient information to enable the Commissioner to determine whether their actions have been reasonable, prompt and diligent:

‘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, by whom it was done, as appropriate to the case) covering the period in question.’ (TRED at [76])

In acting reasonably, it is not expected that a person do the impossible (TRED at [51]).

Exceptional Circumstances

Exceptional circumstances include circumstances beyond the control of a party that prevents the party from complying with a filing requirement, an error or omission by the Commissioner that prevents a party from complying with a filing requirement, or an order of a court.

‘These matters give some guide to the other situations that would be regarded as exceptional circumstances: matters outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence’. (TRED at [64])

Further information on the application of reg 5.9 is provided below.

How Much Information is Required?

General comments: The party seeking an extension must provide sufficient information for the Commissioner to be satisfied that an extension is appropriate.  What is sufficient depends on the case, but in general there should be an explanation of the overall approach that the party has adopted (i.e. the strategy for preparing evidence), a description of what was done, and when it was done (focusing on the major parts of the evidence preparation process), and a discussion of any unexpected difficulties that arose.  Where the information is insufficient to satisfy the delegate, the delegate may allow an opportunity for the party to provide further information.  However, if the information is grossly inadequate, the delegate may set the matter for hearing immediately.  

When applying for an extension of time, parties should provide sufficient information to enable the Commissioner to determine whether their actions have been reasonable, prompt and diligent.  

‘A party seeking an extension of time will assist the Commissioner (and advance their own cause) if they provide information about what they did, when they did it, and how long those actions took.  When considering such information, it is relevant to consider whether there have been any significant unexplained delays.  The presence of significant delays without a reasonable explanation is the antithesis of acting promptly and diligently.’ (Fugro Airborne Surveys Corp v Geotech Airborne Limited [2014] APO 23 at [20])

Whilst a list of actions undertaken provides some information, it is the narrative that puts those actions into context that is important (Clarus Therapeutics, Inc. v Lipocine, Inc. [2014] APO 50 at [21]).  Parties should explain their strategy for preparing evidence and not rely on an inference drawn from their submissions (Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2014] APO 74 at [20]).  Thus, a long chronology that is provided without adequate explanation may not assist in determining whether a party has made reasonable efforts or acted promptly and diligently (Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21).

Parties should endeavour to provide all relevant information at the time of applying for an extension, as opposed to waiting until the delegate requests further information (Osmose New Zealand v Zelam Limited [2014] APO 49 at [15]).

Reasonable Efforts to Comply

Time Period to Consider

The condition in paragraph 5.9(2)(a)(i), that a party make all reasonable efforts to comply with all relevant filing requirements, is intended to import a consideration of the reasonableness of a party’s conduct over the totality of the opposition proceedings, rather than its compliance with a particular evidentiary period in question (Merial Limited v Novartis AG [2013] APO 65 at [16]; Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15 at [18]).

Actions of Applicant

When seeking an extension of time to file evidence in answer, if an applicant can demonstrate that it had given consideration to its case at an early stage, such information will assist the Commissioner.  However, given the costs associated with engaging appropriate experts and drafting declarations, it may be reasonable for the applicant to defer such actions until the evidence in support is filed (Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [18]; Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21 at [28]).  

The volume of evidence can also be a relevant consideration when assessing whether the actions of the applicant were reasonable. (Aquatron Robotic Technology LTD v Zodiac Pool Care Europe [2016] APO 88 at [48])

Establishing Prompt and Diligent Action

Time Period to Consider

When determining whether a party has acted promptly and diligently at all times, consideration should be given to all the actions of the party in relation to compliance with the evidentiary period as a whole.  Thus, where a request for an extension of time follows the grant of a previous extension of time, all actions of the party during the evidentiary period should be considered and not just its failure to comply within the period of the extension already granted (Merial Limited v Novartis AG [2013] APO 65 at [18]).

Length of Time Taken to Complete Actions

The fact that an action takes place over several months does not automatically mean that a party has not been prompt and diligent (Osmose New Zealand v Zelam Limited [2014] APO 49 at [18]).  Consideration should be given to whether the nature of the action is such that it would be reasonably expected to take an extended time, and whether the time taken to complete a task prevents other actions from occurring concurrently.  In considering the length of time taken, it should be noted:

‘While it might have been possible to carry out some activities faster, the time taken is not outside the range of prompt and diligent given the work that was involved.’ (Osmose New Zealand supra at [22])

It should also be remembered that ‘promptly and diligently’ is not setting a standard of perfection (Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63 at [33]).

Misunderstanding of Law

‘While a misunderstanding of the law may be the cause of a failure to act promptly and diligently, I do not accept that it can make the actions of a party prompt and diligent where they otherwise would not have been.’ (Fonterra Co-operative Group Limited v Meiji Dairies Corporation [2014] APO 11 at [19])

Explanation of Delay

Where there are significant delays or gaps in a chronology, an explanation should be provided.  As stated in Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [19]:

‘Any significant gaps or delays in a chronology, where relevant action would generally be expected, should be explained.  The nature of the delay and what was done to attempt to mitigate the delay would be a relevant consideration for an extension of time.  An explanation of the unforeseen and what was done to mitigate that would generally be considered favourably.  A failure to file evidence due to foreseen or foreseeable circumstances would generally not be considered favourably, and effort to address such circumstances in an application or submissions for an extension of time would generally be counter-productive.’

Consideration of Exceptional Circumstances

A change in the Regulations would not make it unreasonable to insist that a party file its evidence and is not an exceptional circumstance (TRED at [67]).  Similarly, a short period of illness is not exceptional (Novartis Vaccines & Diagnostics, Inc. v Wyeth Holdings Corporation [2014] APO 65 at [49]).

Although circumstances may not be regarded as exceptional when considering the preparation of evidence, they may be a relevant context when assessing whether a party has acted promptly and diligently (Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63 at [46]).

Discretionary Matters

The power to extend an evidentiary period under reg 5.9 is discretionary.  Thus, where the requirements of reg 5.9(2)(a) or reg 5.9(2)(b) have been met, an extension of time is not automatic.  Where a party deliberately misleads the Commissioner in order to obtain an extension, either by explicit statement or omission, the Commissioner would be entitled to take this into account when exercising her discretion (Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2014] APO 74 at [34]).  

Consideration may also be given to the nature and significance of the evidence that is being prepared, as well as the private and public interests that exist.