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|Subject: Weekly Email – 2 December 2013|
Patentology - week in review
Request Denied!For just about as long as there have been patent oppositions, there have been relatively generous provisions for obtaining extensions of time to prepare evidence. The reasoning goes that since oppositions serve the purpose of preventing the grant of invalid patents, there is an overarching public interest in ensuring that all pertinent information is available to the decision-maker.
On the other hand, it is not really in anybody's interest for oppositions to take between three and eight years to resolve. So in 2009, when IP Australia began the consultation process on the reforms which eventually became the Raising the Bar legislative amendments, it signalled from the outset that it would be looking to rein in lengthy oppositions, principally by limiting the availability of extensions of time during evidentiary stages.
The final regulations eliminated the broad, permissive and discretionary terms of the former provisions, and replaced them with very specific language setting out what is expected of a party which requires additional time to prepare and file evidence in an opposition. There is now little, if any, room for consideration of the public interest in having a serious opposition heard on its merits. To the extent that this remains a discretionary factor, it is nonetheless a prerequisite that the party seeking an extension take all reasonable steps to meet the relevant deadline, and that the failure to do so is despite prompt and diligent action at all times.
The Australian Patent Office has now, for the first time, applied the new regulations to deny an opponent an extension of time to file evidence in support of its opposition. The decision shows that the Office will be taking a hard line on applications for extensions, as you might expect, considering that it has clearly flagged its intentions over a number of years now.
Patent Office Enforces Tough New Evidence Extension Rules
New Standards for Patent SpecificationsAnother area in which the Raising the Bar reforms have made life more challenging for Australian patent attorneys is in setting higher standards for the disclosure required in a patent specification in order to provide adequate support for protection of the invention. As a result, the skill of the draftsperson plays a greater role than ever before in ensuring that the applicant is able validly to claim in Australia the full extent of patent protection to which they are entitled.
Raising the Bar on Australian Patent Drafting Standards
MORE ABOUT THE WEEKLY NEWSLETTERThe mailing list is not simply an email feed of new articles. It is purpose-written each week to provide a genuine overview of the content of the blog, often providing a slightly different perspective on the topics covered. Since the topic summaries are generally only a couple of paragraphs, the newsletter enables time-poor readers to rapidly assess their level of interest in the full articles, to which direct links are provided.
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