Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Justification for the Extension

Date Published

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)).

Regulation 5.9 states that the Commissioner can extend a time period ONLY IF satisfied of certain matters.  Consequently, the regulation imposes an onus on the party seeking an extension to make out an appropriate case.

The Commissioner will not extend a time period solely because of delays caused by an agent or legal representative failing to act promptly or diligently, difficulties in obtaining expert evidence that could have been anticipated and acted on, or by attempts to settle the proceedings.

An extension is available if a party fails to meet the time period despite acting promptly and diligently at all times.  It follows that the Commissioner will not extend a time period because of delays caused by a failure to act diligently or promptly either by the party, their agent or legal representative, or an expert engaged by them.  

A party is required to make “all reasonable efforts” to comply with relevant filing requirements, and to have acted “promptly and diligently at all times”.  Consequently, a party making a request to the Commissioner for an extension of time should be able to demonstrate a consistent overall pattern of reasonable effort, promptness and diligence in relation to all their endeavours so far to file their evidence within the statutory timeframe.

The party seeking an extension must present sufficient information to justify the extension.  It is not sufficient to assert that an extension should be allowed unless the Commissioner, or the other party, can show that the extension is not appropriate.

Parties will need to provide an explanation of why it was not possible to complete the evidence on time.  This necessarily focuses attention on the actions that the party has taken throughout the preparation of their evidence, not on the actions that they intend taking if the extension is granted.  For instance, an extension is not available merely "in order to allow a declaration to be signed by the expert", because that does not explain why the evidence was not completed in time.  Rather, in order to obtain an extension a party will need to explain why they were unable to have the declaration signed during the existing time period, despite having been prompt and diligent to ensure it was done in time.

The following matters would suggest that a party had not made all reasonable efforts and acted promptly and diligently to comply with an evidentiary period:

  • unexplained delays, e.g. in settling on an expert, in briefing an expert, in preparing a draft by the expert, in finalising the evidence of the expert
  • delays in obtaining expert evidence that could have been anticipated and acted on
  • unavailability of experts due to involvement in other matters, unless the party had exhausted all efforts to find alternative experts
  • the extension is being sought to obtain evidence of matters not referred to (either directly or by clear implication) in the statement of grounds and particulars
  • delays due to intervening holidays, leave, etc which were known or could have been expected
  • the adoption of an inherently lengthy process of evidence preparation, when alternatives exist.  For instance, parties are not required to prepare their evidence in a two stage manner (as distinct from the requirements of the Federal Court in Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315)).  Consequently, the use of a two stage process is a matter of choice, and parties must ensure that no delay arises from this choice.  

Where a party can justify the preparation of their evidence in a two stage manner (as described in Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315), they will need to show that they have diligently and promptly implemented that process.  

The nature and the significance of the evidence that is being prepared may be relevant to the reasonableness of the actions of the party.  

For information regarding issues where parties are undertaking negotiations (see Parties Involved in Negotiations).

Amended Reasons

Amended Reason Date Amended
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