7.11.3.2.1 Requests under Reg 5.10(2)

Also in this Chapter:

• ​​​​​​​7.11.3.2.2 Applicable Law
• 7.11.3.2.3 Justification for the Extension
• 7.11.3.2.4 The Private and Public Interests
• 7.11.3.2.5 Period of Extensions to be Granted
• 7.11.3.2.6 Parties Involved in Negotiations

Key Legislation:

Patents Regulations: 

• reg 5.10 Notice of opposition
• reg 22.23 Written submissions and oral hearings
• reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)
• Schedule 7 Fees

Note:  This information applies to oppositions commenced before 15 April 2013, provided the evidentiary period sought to be extended commenced before 15 April 2013.

Note: The regulations referred to in this section of the manual are those in force immediately before 15 April 2013.

In this topic:

Initial processing of the request

Hearing where an objection is filed

As of 15 April 2013, a request for an extension of time under reg 5.10(2) must be filed with the Commissioner (reg 23.36(2) as in force on and after 15 April 2013).  A fee is payable for each month of extension applied for under reg 5.10(2) (see Schedule 7 item 218, as in force immediately before 15 April 2013).

Initial processing of the request

Upon receipt of an application for an extension of time, the opposition officer will provide a copy of the application to the other party.

Subsequently, the Commissioner will generally process the application as follows:

1. A delegate will consider whether the application contains sufficient justification for an extension.
2. If satisfied that the extension is justified, the parties will be advised and the other party will be asked if they wish to object. If there is an objection, the matter will immediately be set for hearing. In the absence of an objection, the extension will be granted.
3. If the delegate is not satisfied that the extension is justified, they can either request further information or immediately set a hearing. The other party may appear at the hearing, subject to the payment of the appropriate fee (see Schedule 7, item 231 or 231A).  The Commissioner will likely direct that the matter be heard on the basis of written submissions.​​​​​​​​​​​​​​

Hearing where an objection is filed

Where the other party objects to the requested extension of time, the matter will be set for a hearing.  So that the opposition proceedings are not unnecessarily delayed, the Commissioner will establish a hearing date as soon as possible, subject to reg 22.23.  

In most instances the parties should expect that a hearing will be set for a date within 14 to 21 days of the filing of the objection. The Commissioner will not be sympathetic to any delay in hearing the matter without very strong justifications.  The Commissioner will likely direct that the matter be heard on the basis of written submissions.