7.11.3.2.4 The Private and Public Interests

Also in this Chapter:

• 7.11.3.2.1 Requests under Reg 5.10(2)
• 7.11.3.2.2 Applicable Law
• 7.11.3.2.3 Justification for the Extension
• ​​​​​​​7.11.3.2.5 Period of Extensions to be Granted
• 7.11.3.2.6 Parties Involved in Negotiations

Related Chapters:

• 7.7.1.1 Withdrawal of Section 59 and 101M Oppositions

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.

The statement of grounds and particulars provides the basis of the opposition.  If there is no evidence in support filed, the opposition nevertheless continues, and the opponent can still appear at the hearing.  Even if the opposition is withdrawn, the Commissioner may conduct a "bar-to-grant" action on the basis of material referred to in the statement (see 7.7.1.1 Withdrawal of Section 59 and 101M Oppositions).  In so doing, the public interest in ensuring that only valid patents are granted is largely met.  See Kent-Moore Corp v. Environmental Products Amalgamated Pty Ltd [1992] APO 47.  

Public interest considerations were addressed by Burchett J. in Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243 where he said:

"The determination of an application for an extension of time under reg 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account.  There are the interests of the persons directly concerned with application and opposition in question.  There are also the public interests, which are not necessarily all ranged on the same side.  They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office.  But they also include, as Kitto J. pointed out in Kaiser Aluminium & Chemical Corporation v. The Reynolds Metal Company (1969) 120 CLR 136 at 143, 'the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be'."

The balance of the interests of the parties, and of the public interest, is against unnecessarily protracted opposition proceedings however, the Commissioner in deciding whether an extension of time is appropriate in all the circumstances had to give proper, genuine and realistic consideration to all the relevant factors surrounding the extension of time request (A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213).