7.11.2 Extensions of Time - Reg 5.9

Also in this Chapter:

• 7.11.1 Extensions of Time - Section 223
• 7.11.3 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 5.12 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

In this topic:

Relevant Legislation

The Regulations

Introduction

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

Relevant Legislation

The Regulations

Introduction

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 was introduced following amendments to Chapter 5 of the Regulations that took effect on 15 April 2013 to address the significant narrowing of the Commissioner’s discretion to disallow extensions under the previous regime (see Explanatory Statement).

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

Procedural oppositions 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).