7.11.3.2.2 Applicable Law

Also in this Chapter:

• 7.11.3.2.1 Requests under Reg 5.10(2)
• ​​​​​​​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

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:

The power is discretionary

Explanation of delay

The public interest

The interests of the parties

Under reg 5.10(5) as in force immediately before 15 April 2013, an extension of time under reg 5.10(2) to take a step must not be granted unless the Commissioner:

• has notified the parties as appropriate;
• gives the parties a reasonable opportunity to make representations concerning the proposed extension; and  
• is reasonably satisfied that the extension of time is appropriate in all the circumstances.  

In applying the law to decide whether an extension is justified, several matters need to be considered.  The Court decisions most relevant to an extension of time under reg 5.10(2) are:

Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243

A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213

National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398

The general principles that flow from these decisions are as follows:

The power is discretionary

Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements.  It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem [1994] FCA 981 at [11] Goninan 38 IPR 213 at 220)

Explanation of delay

The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement (Ferocem [1994] FCA 981 at [10]).

The public interest

The public interest in determining a serious opposition on its merits is a relevant consideration (Goninan 38 IPR 213 at 222).  It is necessary for the Commissioner to form a view as to the nature of the evidence that is sought to be adduced, and the significance of that evidence for the opposition proceedings (Goninan 38 IPR 213 at 225-6).  The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself (National Starch [2001] FCA 33 at [33]).  The public interest is not protected merely because some evidence has already been served (Goninan 38 IPR 213 at 225).

The interests of the parties

The interests of the party seeking the exercise of discretion are a relevant consideration (Ferocem [1994] FCA 981 at [11]).

It is also relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patent Office. (Ferocem [1994] FCA 981 at [11], Goninan 38 IPR 213 at 222).