7.11.3.2.3 Justification for the Extension

Also in this Chapter:

• 7.11.3.2.1 Requests under Reg 5.10(2)
• 7.11.3.2.2 Applicable Law
• ​​​​​​​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.

Before granting an extension of time under reg 5.10(2), the Commissioner must be reasonably satisfied that the extension is "appropriate in all the circumstances" (reg 5.10(5)).  This gives the Commissioner a broad discretion, one which should be exercised only after due regard is given to the various considerations relevant to an extension of time.

Burchett J. in Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, in discussing the considerations for determining an application for an extension of time under reg 5.10(2), inter alia referred to the observations of Bowen C.J. in Vangedal-Nielsen v. Smith [1980] FCA 163, noting "he ... set out some of the considerations involved upon an application for an extension of time".

From these judgements these considerations can be stated generally as follows:

• the Commissioner, before allowing an extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension
• the Commissioner must consider not only the private interests of applicants for patents and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

The Commissioner should also be mindful of the procedural framework in which oppositions under the Patent Regulations 1991 are conducted (refer to 7.11.3.2.2 Applicable Law).  For example, relevant factors to consider where an extension of time for filing evidence is requested may include:

• is the extension being sought for reasons which are based on matters not referred to (either directly or by clear implication) in the statement of grounds and particulars? (Kent-Moore Corp v. Environmental Products Amalgamated Pty Ltd [1992] APO 47; Sandoz v. Fujisawa 26 IPR 426, Kimberly-Clark v. Procter & Gamble 24 IPR 345)
• is the extension being sought to find evidence to support speculative or non-specific particulars? (Kent-Moore [1992] APO 47);
• is the extension being sought because the opponent requires more time to determine whether a particularised document is relevant? (Kent-Moore [1992] APO 47);
• has there been any undue delay in putting the evidence together? (Kent-Moore [1992] APO 47, Sandoz v. Fujisawa)
• has there been a satisfactory explanation of why a delay occurred? (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981)
• Is the extension to determine whether a particularised document is relevant? (Sandoz v. Fujisawa, ICI v. Irenco Inc & Ors 26 IPR 154, E.I. DuPont de Nemours and Company v. DowElanco (Patent Application No. 626551) (1994) AIPC 91-067)
• the seriousness of the opposition (ICI v. Irenco, E.I. DuPont v. DowElanco)
• delay in determining other matters relating to the opposition (Kimberly-Clark v. Procter & Gamble 26 IPR 581, DuPont v. DowElanco an unreported decision on Patent Application No. 626551 dated 29 November 1993)
• complexity of the evidence (DuPont v. DowElanco (29.11.93), Kimberly-Clark v. Procter & Gamble 26 IPR 581, ICI v. Irenco)
• intervening holidays, leave, etc (Kimberly-Clark v. Procter & Gamble 26 IPR 581)
• unavailability of people due to overseas prosecutions (Genetics Institute v. Johnson & Johnson 27 IPR 277, Kimberly-Clark v. Procter & Gamble 26 IPR 581)
• parties undertaking negotiations (see 7.11.3.2.6 Parties Involved in Negotiations)
• the nature and the significance of the evidence Goninan v Commissioner [1997] FCA 424.

All relevant matters must be taken into consideration.  However, the absence of a satisfactory explanation of the delay does not preclude an extension of time being granted if an extension is appropriate in the circumstances (Ferocem [1994] FCA 981).

The onus rests with the party seeking an extension of time to justify its grant by the Commissioner.  Accordingly, the extension request should provide sufficient details of the grounds and circumstances necessitating the extension sought to allow the Commissioner to be reasonably satisfied that the extension is appropriate in all the circumstances.

A Goninan v Commissioner [1997] FCA 424 notes that in order to give proper, genuine and realistic consideration to the public interest of having proceedings determined on their merits, the delegate needs to consider the nature and the significance of the evidence sought to be adduced.

National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33 notes that the delegate does not need to have seen this evidence sought to be adduced to determine its nature and significance, but that these can be determined from the context of the other material on file.

“It was said that the error of fact was that there was material before the delegate from which he could make a determination of the significance of the evidence. I do not consider that is a correct characterisation of the error into which the delegate fell. If there was material before the delegate from which findings could be made as to the significance of the evidence, it was incumbent upon the delegate to address that issue in the context of that material.  By failing to consider the significance of the evidence in respect of the patent specification, the grounds of opposition and the particulars of the grounds and the material which had already been filed, the delegate failed to give proper, genuine and realistic consideration to the significance of that evidence, which had a flow on effect on consequence in relation to the consideration of the public interest in determining a serious opposition on its merits.  To that extent the delegate failed to take into account a relevant consideration.”