7.11.2.2 Application of the Law

Also in this Section:

• 7.11.2.1 Requesting an Extension of Time
• ​​​​​​​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

Sub-chapters in this Section:

• 7.11.2.2.1 Application of Regulation 5.9​​​​​​​

Key Legislation:

Patents Regulations:

• reg 5.9 Extension of time for filing evidence

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)).

In this topic:

Introduction

Extension on the Commissioner's own initiative

All reasonable efforts, and despite acting promptly and diligently

Exceptional circumstances​​​​​​​

Introduction

The Commissioner has a limited discretion to allow an extension of time, and an extension cannot be allowed under reg 5.9 unless at least one of the following conditions is satisfied:

a. the party seeking the extension has made all reasonable efforts to comply with all relevant filing requirements, and has been unable to file their evidence despite acting promptly and diligently to ensure it is filed in time; or

b. there are exceptional circumstances that warrant the extension.

Extension on the Commissioner's own initiative

The Commissioner can grant an extension of time without a request by a party.  This will most commonly occur where the Commissioner has become aware of exceptional circumstances.  

All reasonable efforts, and despite acting promptly and diligently

An extension of time is only available if the party has made all reasonable efforts to meet the time period AND is unable to do so despite acting promptly and diligently.

What amounts to reasonable efforts must be determined in each case.  However, a party would not have established reasonable efforts if:

• there are unexplained periods of delay;
• the party had delayed before seeking to engage an expert;
• the party had delayed before seeking to engage an additional expert;
• the expert had delayed before providing a draft of their evidence;
• the applicant had delayed before providing instructions to their representative; or
• the applicant had delayed in order to await the outcome of proceedings in another jurisdiction.

A party seeking an extension of time must have acted promptly and diligently at all times to ensure that the evidentiary stage is completed on time.

Exceptional circumstances

Regulation 5.9(5) defines exceptional circumstances as including the following:

a. a circumstance beyond the control of a party that prevents the party from complying with a filing requirement

b. an error or omission by the Commissioner that prevents a party from complying with a filing requirement

c. an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action

Circumstances that normally arise during the preparation of evidence cannot be regarded as exceptional.  For instance, unavailability of experts for periods of time due to leave, work commitments, personal commitments or even short periods of illness are not exceptional.

A significant change in circumstances may not in itself be exceptional.  For example, if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, the sudden loss of the preferred expert is not an exceptional circumstance.