Free, Streamlined Extensions of Time to End at IP Australia, but COVID Impact Can Still be Considered Under ‘Normal’ Procedures

Since April last year, IP Australia has provided a streamlined process under which most deadlines associated with Australian patent, trade marks, and design rights – including evidence deadlines in opposition matters – could be extended by up to three months, at no charge, if the extension is required ‘due to the disruptive effects of the COVID-19 pandemic’.  That program ends on 31 March 2021.  From 1 April 2021, extensions of time will still be available for those impacted by the COVID-19 outbreak, but will be considered on a case-by-case basis.

Under the streamlined program, a party seeking an extension of time has been required only to tick a box in order to make a declaration that the impacts of COVID-19 had prevented a relevant act from being carried out within time.  This is much simpler (and cheaper) than the usual process, under which detailed evidence is required – typically in the form of a formal declaration or affidavit, along with any relevant accompanying exhibits – demonstrating exactly how events and/or circumstances have prevented the deadline from being met.  Additionally, official fees have been waived under the streamlined program.  These are typically based on the number of months of additional time requested, and can be quite substantial, e.g. up to A$1500 for a three-month extension of time to file evidence in a patent opposition.

While a blanket waiver of fees is unusual, it is clearly within the power of IP Australia to choose not to levy a fee for any service that it provides.  However, it is not within the agency’s power to waive the requirements of the Patents Act 1990 or the Patents Regulations 1991 (or corresponding legislation and regulations relating to other IP rights) with regard to the grounds upon which extensions of time may be legitimately granted.  In principle, therefore, streamlined extensions have generally been considered under existing provisions allowing for deadlines to be extended where ‘circumstances beyond the control’ of the responsible person(s) have prevented an action from being taken within the required time.  Ticking of the ‘COVID-19 box’ has thus been treated as prima facie evidence that the pandemic was, indeed, the cause of a failure to meet a deadline, with IP Australia warning that a false declaration could put the validity of the applicant’s IP rights at risk.

The initiative to make obtaining COVID-19 extensions simpler and cheaper was further complicated by the fact that in proceedings involving other parties, IP Australia is usually obliged to give those other parties an opportunity to comment on, and/or object to, the grant of an extension of time.  This obligation could not be suspended, and there were at least two patent matters in which objections were lodged.

With practices and procedures for requesting extensions of time returning to normal (or, at least, ‘COVID-normal’), it is to be expected that any party requiring an extension as a result of the impact of COVID-19 will bear a greater onus to demonstrate exactly why an extension is justified.

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Tags: Australia, COVID-19, Extensions of time, Patent Office

IP Australia is Providing Free, Streamlined Extensions of Time for Parties Impacted by COVID-19

Update 29 March 2021: IP Australia's streamlined process for obtaining extensions of time ends on 31 March 2021. For more details see: Free, Streamlined Extensions of Time to End at IP Australia, but COVID Impact Can Still be Considered Under ‘Normal’ Procedures.

IP Australia has announced that, as of 22 April 2020 up until at least 31 May 2020, most deadlines associated with Australian patent, trade marks, and design rights – including evidence deadlines in opposition matters – can be extended by up to three months, at no charge, if the extension is required ‘due to the disruptive effects of the COVID-19 pandemic’.  Free extensions are also available for many deadlines associated with plant breeder’s rights (PBR), although due to specifics of procedures and the PBR legislation these are being handled differently, and often on a case-by-case basis.

The streamlined process for requesting an extension of time involves filing the request online, via the eServices portal, and specifying that the extension is required for ‘circumstances beyond the control of the person’ concerned.  The only supporting documentation required is a simple declaration stating that the reason the existing deadline cannot be met is ‘due to the disruptive effects of the COVID-19 pandemic’.  IP Australia has provided a proforma document containing standard text that may be used for this purpose.  At present, eServices still requires the usual fees to be paid, however IP Australia will refund the fee, and is working to update eServices so that the fee can be waived.  It anticipates that this change will be in place by the end of April.

This streamlined process, and the waiving of fees, are (to my knowledge) unprecedented.  It is particularly notable that the process and fee waiver apply to extensions of time to file evidence in opposition proceedings, for which the normal extension fees are A$500 per month, and extensions have been significantly more difficult to obtain since commencement of the Raising the Bar reforms in 2013. 

In ‘normal’ times, a party requesting an extension of time is required to provide substantive evidence, in the form of a declaration along with any supporting documentation, which may be subject to close scrutiny by IP Australia to determine whether the extension is justified.  Depending on the circumstances, and the type of extension being sought, other interested parties may have the opportunity to comment and/or oppose the grant of an extension.  In oppositions, in particular, it is common for other parties to the opposition to challenge requests for extensions of time.

In these ‘abnormal’ times, however, I suspect that challenges to COVID-19 extension requests are unlikely to be entertained by IP Australia. Requests for extensions under section 223 of the Patents Act 1990, need not be advertised for opposition purposes if they are for no more than three months – as is the case under the streamlined process.  Regarding extensions to patent opposition deadlines under regulation 5.9, it appears that IP Australia intends to accept at face value requests based on the standard text, without requiring any further evidence or documentation, which may leave other parties with no real basis to challenge the justification for the extension.  In any event, if challenges to streamlined requests are permitted, they will cease to be streamlined, which would defeat the purpose of the process!

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Tags: Australia, COVID-19, Extensions of time, Patent Office

The Patent Office is Granting Time Extensions to Australia’s Grace Period for Filing After Self-Disclosure

The Australian patent law and regulations provide applicants with a 12-month ‘grace period’, enabling an application to be validly filed following an inadvertent, or intentional, act of self-disclosure of an invention.  As most readers will doubtless be aware, this is significant because in the absence of such provisions, any disclosure – such as publication or public use – of an invention before securing a priority date becomes prior art that can be used to invalidate patent claims on the basis of lack of novelty or lack of inventive step.  While there are a number of countries that provide a general period of grace of this kind, notably including the USA and Canada, the majority of countries do not.

Furthermore, most countries (Australia included) have provisions in their patent laws to permit time limits to be extended in appropriate circumstances, such as when an inadvertent error or omission has occurred, or when circumstances beyond someone’s control have prevented them from meeting a deadline.  Typically, however, grace periods cannot be extended beyond the legislated period (i.e. 12 months, in Australia’s case).  There are a number of ways to rationalise this restriction.  One approach is to observe that an inventor (or successor in title, such as an employer) is under no obligation to file a patent application at all and, until an application of some sort is filed, does not make themselves subject to any provisions of the patent system.  Thus, once a disclosure has occurred, the onus is entirely upon the prospective applicant to ensure that an application is filed before the expiry of any applicable grace period, given that there is no public record within the system of any relevant filing ‘deadline’ that could be extended.

Another approach is to consider that a grace period operates retrospectively, rather than prospectively.  That is, when applying the patent laws to an application, the effect of the grace period is to permit certain disclosures to be disregarded, so long as they occurred no more than 12 months prior to the actual filing date of the application.  This is in contrast, for example, to the filing of an initial priority application, which formally establishes a specific date 12 months in the future by which any further applications must be filed in order to obtain the benefit of the priority date.  Extending a grace period thus has the effect of increasing the period further back in time, as opposed to granting the applicant additional time to complete an act for which a specific time limit has already been established within the system.

Permitting extensions to grace periods is problematic for a number of reasons.  Firstly, it may leave no obvious trace of the fact that a patentee has been permitted to obtain a patent despite having made a public disclosure of the invention more than 12 months prior to filing an application.  A member of the public would need to dig into the details of the Patent Office files to discover exactly what additional period of grace has been allowed, and in what circumstances.  Secondly, due to the retrospective effect of a grace period extension, the applicant is effectively permitted to file an application later than should have been allowed, which is advantageous because a patent that is filed later also expires later than would otherwise be the case.  In priciple, however, the grant of an extension of time should do no more than place the applicant in the same position that they would have been in had they not missed the deadline in the first place, and no better.

Notwithstanding these issues, it has recently been brought to my attention that IP Australia is, in fact, granting extensions to the grace period.  I must confess that I had not believed such extensions to be possible (although, as I shall explain, there is a single published Patent Office decision from 2002 that suggests otherwise).  Indeed, as will become clear, I remain sceptical about the validity of extending the grace period, in the absence of any judicial consideration of the matter.

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Tags: Australia, Extensions of time, Grace period, Patent Office

What Every Patent Practitioner and Applicant Needs to Know About Divisional Applications in Australia

Since commencement of the Raising the Bar patent reforms in 2013 there has been a potentially fatal trap in the Australian rules relating to divisional applications.  I have always thought it inevitable that someone would eventually fall into this trap – and practically certain that when it did happen, the applicant would be from the United States.  A recent decision of the Australian Patent Office, in which a US-based applicant has been denied the opportunity to convert an application into a divisional of an earlier filing, in order to avoid having one of its own previous applications cited as invalidating prior art, has confirmed my prediction: Magnum Magnetics Corporation [2019] APO 3.  Of course, this may not be the first time this situation has arisen.  To the best of my knowledge, however, it is the first time it has resulted in an actual Patent Office decision highlighting the issue.

In this recent case, Magnum Magnetics Corporation (‘Magnum’) filed an independent patent application in Australia when (as it subsequently turned out) the application should really have been filed as a divisional of an earlier application.  So far, its efforts to correct this error have been unsuccessful.

As most readers will be aware, a divisional patent application is a type of patent application which is based on a previously filed application, commonly called the ‘parent’ application.  A divisional application inherits the parent’s filing date and, to the extent that it discloses and claims subject matter that was also present in the parent, those claims are entitled to the same priority date.  The primary purpose for which divisional applications were originally created was to enable further inventions that may have been disclosed in an initial application to be protected, since as a general principle a single patent may only claim a single invention.  However, over the years many other practical and strategic uses of divisional applications have been developed.  For example, it is permissible to update or add new subject matter in a divisional application, although any claims based on the added matter will not usually be entitled to the benefit of the parent’s priority date.

Historically, it has been very easy in Australia to convert between ‘regular’ and divisional applications, requiring only a straightforward amendment to the patent request.  Such an amendment could be made at any time during the lifetime of the application/patent.  However, the Raising the Bar reforms changed the rules, adding additional restrictions on when an application may legitimately be converted to a divisional.  These restrictions will rarely be an issue for applicants that are making appropriate and well-informed use of the Australian patent application system.  However, a failure to appreciate the limitations of the Australian system – and, to be honest, this is something I have seen on a number of occasions from US practitioners, since their system is quite different – can get an applicant into trouble.

Unfortunately, this appears to be what happened to Magnum, although I think that there may still be some hope of saving its application.

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Tags: Australia, Divisional applications, Extensions of time, International treaties, Paris Convention, PCT, Priority claim

Reforms Cut Average Patent Opposition Delays by Two Years, But They Still Take Too Long

Australia has a pre-grant patent opposition system, meaning that an opportunity is provided after a patent application has been approved by an examiner, but before a patent is actually granted, for third parties to raise objections.  The usual policy justification for pre-grant oppositions is that they allow grounds of invalidity that may have been unavailable to the examiner to be raised by parties who may have greater familiarity with, and access to, knowledge and prior art information relating to the claimed invention.  Most often, an opponent is a competitor of the patent applicant, and thus has a particularly strong incentive to ensure that an invalid patent that may hinder its own activity is not issued.  Accordingly, the public benefits from this additional level of scrutiny which can reduce the incidence of invalid patents being granted.

The disadvantage of pre-grant opposition proceedings is that they extend the period during which a patent application remains pending – sometimes by many years.  In the event that (as is overwhelmingly the case) a patent is ultimately granted, the patentee may have been deprived of a significant portion of the time during which it might have been able to immediately enforce its rights.  The wider public is also disadvantaged by lengthy delays, during which time the ultimate scope of any patent granted – or, indeed, whether or not a patent will be granted at all – remains uncertain.

Prior to the Raising the Bar (‘RTB’) reforms to the Australian patent laws and regulations, which came into effect on 15 April 2013, the largest contribution to opposition delays was the time taken by opponents and patent applicants to prepare evidence supporting their respective positions.  Although the rules nominally allocated three months to each of the three usual evidentiary periods, applications for extensions of time, and for opportunities to file additional evidence had become, in practice, almost impossible for the Patent Office to refuse.  However, the RTB reforms included significant amendments to the Patents Regulations 1991 that have substantially limited the ability of each party in a patent opposition to obtain an extension of time to prepare evidence.  With four years now having passed since the amendments commenced operation, it is timely to take a closer look at their impact on opposition delays.

Using data available in the 2017 edition of IP Australia’s IP Government Open Data (IPGOD) set, I have analysed 211 patent oppositions that have commenced since 2004, and which proceeded through to a Patent Office hearing and final decision.  Of these, 102 were conduced entirely under the pre-RTB regime, while 57 were conducted wholly according to post-RTB extension-of-time regulations.  The remaining 52 oppositions were ‘transitional’, in the sense that they commenced pre-RTB, but included at least one evidentiary period governed by the post-RTB rules relating to extensions of time.

The main findings from my analysis are that:

1. the RTB reforms have cut the average total duration of an Australian patent opposition by nearly 50%, from just over four years (1512 days) to just over two years (773 days);
2. variability in opposition duration has dropped even more dramatically, by more than a factor of three, but the standard deviation remains high at over 200 days;
3. the average total time required for parties to prepare and file evidence has been slashed from 803 days to just 250 days;
4. however, the period between finalisation of evidence and a decision following a hearing remains lengthy, averaging 332 days, and also highly variable, with a standard deviation of 130 days;
5. furthermore, where an application is not refused as a result of opposition (i.e. the overwhelming majority of cases), the period between the decision and grant of the patent is hugely variable, having a standard deviation of 162 days, in relation to an average of just 121 days.

A common contributor to non-evidence-related delays, both before and after a hearing on the substantive merits of an opposition, is the procedure that must be followed if the applicant wishes to amend the application to address grounds of opposition.  Additionally, although appeals of opposition decisions to the Federal Court of Australia are relatively rare, when they do occur they contribute significantly to the average duration and variability of post-decision delays.  Finally, it appears that it is not uncommon for delays to be incurred after finalisation of evidence primarily due to a failure of the Patent Office to progress the opposition expeditiously to a hearing.  These delays may be on the order of many months, as a result of which the average time between completion of evidence and a decision in post-RTB oppositions is now greater than the average time required for preparation and filing of all evidence by both opponent and applicant.

It is therefore clear that while the RTB reforms to the requirements for obtaining an extension of time to prepare evidence have been highly effective, many patent oppositions are still taking months longer to resolve than should be required.  What has changed, however, is that opponents and applicants are no longer the primary source of delays.  The next frontier for further improvement in the speed of resolution of patent oppositions lies within the Patent Office.

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Tags: Australia, Evidence, Extensions of time, IPGOD, Opposition, Patent analytics, Patent Office

High Court Majority Upholds LEXAPRO Patent Time Extension

On 5 November 2014, the High Court of Australia handed down its decision confirming (by a three-to-two majority) that it is possible to obtain an extension of time within which to apply for an extension of the term of a patent relating to a pharmaceutical substance, so long as the extension application is filed prior to expiry of the patent: Alphapharm Pty Ltd v H Lundbeck A/S [2014] HCA 42.

This decision is an important milestone in a long-running saga relating to the antidepressant drug escitalopram, originally marketed in Australia as LEXAPRO, and covered (at least until 13 June 2009) by Australian patent no. 623,144.  The patent is owned by H Lundbeck A/S, which had applied to extend the term of the patent to 9 December 2012, as compensation for delays in obtaining regulatory approval to market LEXAPRO in Australia.  But, for reasons that I explained in an earlier article on the case, Lundbeck required an extension of time to allow its application for an extension of term to be considered, because it was filed about ten years too late!

The issue before the High Court was whether, under the relevant provisions of the Patents Act 1990 and the Patents Regulations 1991, the Commissioner of Patents has the power to extend the time for filing an application for an extension of term in any circumstances.  The Court’s answer to this is, in essence, ‘yes’ – if the application to extend the term of the patent, and the associated request for an extension of time, are filed prior to the patent’s expiry.

This does not, however, bring an end to the matter.  There is a separate question of whether it was appropriate, in the particular circumstances of this case, for the extension of term to be granted, which is still making its way through the appeals process.  Hot on the heels of the High Court’s ruling, a single judge of the Federal Court of Australia has handed the latest round in this part of the dispute to Lundbeck, dismissing an appeal from the Commissioner’s decision to allow the extension:

Alphapharm Pty Ltd v H Lundbeck A/S [2014] FCA 1185.

A great deal of money is at stake in all of this.  A number of generic pharmaceutical companies released their own escitalopram products following the original expiry date of the Lundbeck patent (a risky strategy, given that they were certainly aware of Lundbeck’s extension application by that time).  The patent itself has already been found valid and infringed by a Full Bench of the Federal Court of Australia (in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70), and all avenues of appeal from that decision have been exhausted.  Thus if the term extension is ultimately upheld (as it has been at every turn so far), damages will be due to Lundbeck for infringement of the patent between 13 June 2009 and 9 December 2012.

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Tags: Appeal, Australia, Extension of patent term, Extensions of time, Pharmaceuticals

High Court to Consider Pharmaceutical Term Extension Question

In the latest development in a long-running saga, the High Court of Australia has agreed to hear an appeal over whether or not it is possible to obtain an extension of time within which to apply for an extension of the term of a patent relating to a pharmaceutical substance.

The substance in question in this case is the antidepressant drug escitalopram, marketed in Australia as LEXAPRO, and covered (at least until 13 June 2009) by Australian patent no. 623,144 owned by H Lundbeck A/S.  Lundbeck is looking to extend the term of the patent to 9 December 2012, which it would be entitled to do as compensation for delays in obtaining regulatory approval to market LEXAPRO in Australia.  But, in order to do this successfully, it requires an extension of time to allow its application for an extension of term to be considered, because it was filed about ten years too late!

So far, the Australian Patent Office, the Administrative Appeals Tribunal, and a (unanimous) Full Bench of three experienced judges of the Federal Court of Australia have all upheld Lundbeck’s claim to the extension of time. 

However, the additional three-and-a-half years of patent term presumably represents a great deal of money in prospective damages to be paid by generic pharmaceutical manufacturers, who have been selling products in competition with LEXAPRO, and so they not given up on appealing!  And, it seems, rightly so – because on 11 April 2014 the High Court of Australia granted ‘special leave’ (transcript at Alphapharm Pty Ltd v H Lundbeck A/S & Ors [2014] HCATrans 79), allowing generic manufacturer Alphapharm Pty Ltd to appeal the Federal Court decision.

In fact, Alphapharm was only 50% successful in its bid.  The High Court declined to take the question of whether it was ‘reasonable’ for Lundbeck to be granted an extension of an entire decade any further, presumably feeling that the tribunals below had weighed up all of the relevant factors correctly.  The High Court appeal will therefore be limited to the single question of whether an extension of time to apply for an extension of term is available at all under the provisions of the Australian Patents Act 1990 and Patents Regulations 1991.

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Tags: Appeal, Australia, Extension of patent term, Extensions of time, Pharmaceuticals

The Hard Line on Extensions of Time in Patent Oppositions

Since the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 came into effect on 15 April 2013, new, stricter, rules have applied to parties hoping to obtain an extension of a time period for filing evidence in an Australian patent opposition.

As of the time of writing this article there have been seven published Patent Office rulings on extension requests decided under the new regulations.

Unsurprisingly, considering that an express intention of the new rules was to raise the bar on extensions of time, five of the seven requests considered under the new regulations have been refused. 

However, while the situation looks grim for parties requiring additional time to prepare opposition evidence, things are not as bad as the published decisions might suggest.  By definition, it is typically the most contentious cases that proceed to a hearing and a written decision.  I am aware of a number of recent cases in which extensions of time have been granted, under both the new and old rules, without any need to request a hearing.  Naturally, the majority of clearly worthy applications for extensions will be granted without fuss or fanfare. 

And, as I explain below, there is much to be learned from the failures of those parties that have had to take their requests to a hearing!

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Tags: Australia, Evidence, Extensions of time, Patent Office, Raising the Bar, Regulations

Patent Office Enforces Tough New Evidence Extension Rules

Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 (11 November 2013)

In the first published decision of the Australian Patent Office relating to the new Raising the Bar regulations on extensions of time during opposition proceedings, an opponent has been denied an extension to file evidence in support of its opposition.  The decision confirms that the Office will be taking a hard line on applications for extensions.

In its June 2009 consultation paper, Resolving Patent Opposition Proceedings Faster [PDF, 198kB], IP Australia identified delays in opposition proceedings – with oppositions often running for between three and eight years – as one of the issues to be tackled under the Raising the Bar reforms.  Long delays were most commonly due to evidential time-frames, as a result of the Patent Office having only limited powers to refuse requests for extensions of time.

This changed when the Raising the Bar reforms, and in particular the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013, came into effect on 15 April 2013.  New Regulation 5.9 established a more rigorous test under which, unless exceptional circumstances apply, parties preparing evidence in the course of opposition proceedings must act promptly and diligently at all times, and make all reasonable efforts to comply with relevant time periods. 

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Tags: Australia, Evidence, Extensions of time, Patent Office, Raising the Bar, Regulations

‘Raising the Bar’ Transition Begins to Bite!

Euroceltique S.A. [2013] APO 30 (9 May 2013)
Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. [2013] APO 34 (30 May 2013)


Two recent decisions of a Delegate of the Commissioner of Patents have focussed attention on transitional provisions in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  In each case the outcome has been unfavourable to the applicant.

1. In the first decision, Euroceltique S.A. has been denied permission to amend its patent application while an appeal of an earlier opposition to the Federal Court remains pending, as a result of the operation of new section 112A of the Patents Act 1990.
2. In the second decision, a request by joint applicants Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. for an extension of time to file a request for examination under the former law, predating the Raising the Bar reforms, has been refused.

As regular readers of this blog would be well-aware, the majority of provisions in the Raising the Bar Act came into effect on 15 April 2013.  Naturally, this act included transitional provisions to define what should happen in the case of applications and other actions commenced before the commencement date, but which remain in-progress after that date.

The most important of these transitional provisions cover the substantive changes to the standards required of a valid patent, including the tests for inventive step, utility, and the level of disclosure required in order to support the full scope of protection claimed by an application or patent.  For these types of reforms introduced by the Raising the Bar Act, the new standards may apply to applications filed before 15 April 2013, but only if a request for examination is not filed until after that date.

However, other amendments made by the Raising the Bar Act have alternative transitional provisions and, in particular, some had immediate effect from 15 April 2013 even in respect of matters already in-progress.

In the short time since commencement of the Raising the Bar reforms, the Patent Office has already had reason to consider the effect of each of these types of transitional provision.

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Tags: Amendments, Australia, Extensions of time, Raising the Bar

Lundbeck Wins Latest Round in LEXAPRO Term Extension Bout

Aspen Pharma Pty Ltd and Ors and Commissioner of Patents and H Lundbeck (Joined Party) [2012] AATA 851 (4 December 2012)

Extension of term – appeal from grant of an application for an extension of time – whether extension available under Patents Regulations 1991 – whether misunderstanding of the law a relevant ‘error or omission’ – whether exercise of discretion justified

The Administrative Appeals Tribunal (AAT) has upheld a decision of the Australian Patent Office granting an extension of time of 121 months for pharmaceutical manufacturer H Lundbeck A/S to request an extension of term of its Australian patent no. 623,144, covering its antidepressant drug escitalopram, marketed in Australia as LEXAPRO.

In the absence of the requested extension of term, the LEXAPRO patent expired on 13 June 2009.  With an extension of term – based upon the listing of the earlier drug CIPRAMIL on the Australian Register of Therapeutic Goods (ARTG) – the expiry date of the patent becomes 9 December 2012.  Although this extended term will itself have expired before it can even be formally granted, a number of generic pharmaceutical manufacturers have been marketing their own escitalopram products throughout the intervening period, and may therefore be liable to pay damages to Lundbeck corresponding with these sales.

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Tags: Australia, Extension of patent term, Extensions of time, Pharmaceuticals

Australian Patent Office Discretion in Opposition Proceedings

Alcon Research, Ltd v Sylentis S.A.U. [2012] APO 55 (29 May 2012)
BHP Billiton Worsley Alumina Pty Ltd v Alcoa of Australia Limited [2012] APO 60 (13 June 2012)
Gallus Ferd, Ruesch AG v Strork Prints B.V. [2012] APO 46 (2 May 2012)
Neste Oil Oyj v BP International Limited [2012] APO 20 (1 February 2012)
BP International Limited v Neste Oil Oyj [2012] APO 40 (28 March 2012)

Patent Office practice and procedure – Regulation 5.10 – extensions of time and other conduct of opposition proceedings – exercise of discretion – satisfactory explanations – significance of evidence and public interest in oppositions being considered on merit

Regulation 5.10 of the Australian Patents Regulations 1991 gives wide-ranging discretionary powers to the Patent Office for directing the conduct of opposition proceedings.  In particular, the regulations provide for time limits – such as those applying to the service of evidence – to be extended, and for parties to apply to serve additional evidence in appropriate circumstances.

A number of recent decisions by delegates of the Commissioner or Patents highlight the factors which the Office will currently take into account when deciding whether or not to exercise discretion in favour of a party to an opposition.  The major considerations are:

1. whether the party requesting the exercise of discretion, e.g. to extend a time period, or to allow service of further evidence, has provided an adequate explanation of its reasons for requiring the indulgence; and
2. whether there is a probability that the exercise of the discretion as requested will have a significant impact on the outcome of the opposition.

It is not necessary that the party provide a ‘full and frank’ disclosure of all of the circumstances leading to the requirement for the exercise of discretion.  Nor is it necessary to establish any particular likelihood that the exercise would be determinative of the outcome of the opposition.

Nonetheless, any party seeking a favourable hearing from the Patent Office in an application relating to the conduct of opposition proceedings would be well-advised to make sure they have both of the above points well covered.  This advice is illustrated by the following recent examples.

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Tags: Australia, Extensions of time, Opposition, Patent Office

Assuming Next-Day Delivery of Mail an ‘Error’

TransLang Technology Ltd v Twister B.V. [2011] APO 70 (6 September 2011)

Opposition – request for extension of time to serve Statement of Grounds and Particulars – delay in postal delivery – whether ‘all due care’ taken – whether ‘circumstances beyond control’ – whether ‘error or omission’

In this recent Patent Office decision, Delegate Dr S.D. Barker was required to consider a delay by the opponent, Twister B.V., in serving a Statement of Grounds and Particulars of opposition upon applicant TransLang Technology Ltd, which arose due to slow delivery by Australia Post.  Specifically, the Statement was mailed by the opponent’s attorneys from the Sydney CBD on Wednesday, 6 April 2011, in order to meet a deadline for service upon the applicant – whose attorneys were also located in the Sydney CBD, about three blocks away – of Thursday, 7 April 2011.

The delivery in fact took three business days, arriving on Monday, 11 April 2011, four days after the deadline.

These facts, which were set out in a Statutory Declaration made by Twister’s attorney, were not in dispute.  What the Delegate had to determine was whether they provide a basis for grant of an extension of time for service of the Statement, and on what grounds.

The opponent’s attorney argued that an extension should be granted because the delay had occurred despite all due care on his part.  However, the Delegate determined that assuming next-day delivery did not constitute the requisite standard of care.  The extension was granted nonetheless, on the alternative basis that it was a relevant ‘error’ on the part of the attorney to rely upon Australia Post to deliver an article the next day within the same metropolitan area.

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Tags: Australia, Electronic communications, Extensions of time

Choose Your Story Well (or, How to Lose an Extension of Time)

Carol Almond-Martin v Novo Nordisk Health Care AG [2011] APO 42 (21 June 2011)

Extensions of time – request for extension of time to pay acceptance fee after application opposed – whether relevant ‘error or omission’ involved in prior decision to abandon application – whether service of Notice of Opposition after payment deadline ‘causative’

We regularly have cause to write about the process of obtaining extensions of time under the Australian IP laws and regulations (often enough for this to be one of the special topics under the ‘Law and Practice’ category in our ‘Topics’ menu, above).

The circumstances in which extensions of time are granted – or refused – are necessarily based upon the facts of the particular case.  Almost every published decision is therefore a useful lesson in how, or how not, to present evidence and arguments in support of the grant of an extension of time.  Whether the circumstances leading to a missed deadline arose in the applicant’s office, or that of their agent or attorney, the basic rules to trigger application of the extension provisions are quite simple:

1. the must first be an identifiable error, omission, or circumstance beyond the control of the relevant person; and
2. this must have been causative of the failure to meet the deadline in question, which generally means that it must have occurred, or first arisen, prior to the deadline.

This decision in relation to an extension request by Novo Nordisk Health Care AG, by Hearing Officer Dr Steven Barker, is an example of an approach that failed to show that these basic requirements were satisfied.  With the benefit of hindsight, it is not hard to see what went wrong and what might, in retrospect, have been done differently.

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Tags: Australia, Extensions of time

‘Mere Failure’ No Excuse for Missed Convention Filing Deadline

Kmart Australia Limited v Joseph Joseph Limited [2011] ADO 2 (21 April 2011)

Designs Act 2003 – Extensions of time – whether ‘misapprehension’ or ‘ignorance’ of the law provides basis for an extension of the time to file a design application claiming convention priority from earlier foreign application

We have previously used the excuse that protection for industrial designs is provided by ‘design patents’ in some jurisdictions (most notably the US) to justify commenting on this blog in relation to decisions on registered designs matters.

In this case, we have two additional excuses.  Firstly, we do not believe that there has been any previous published decision in relation to an application for an extension of time under section 137 of the Designs Act 2003.  Secondly, the relevant provisions in the Designs Act are almost identical with those set out in section 223 of the Patents Act 1990, such that decisions under one act are likely to be pertinent to the other.  (Section 224 of the Trade Marks Act 1995 also includes similar provisions.)

Hearing Officer Heath Wilson was required to consider whether it was appropriate to grant an extension of time so that the applicant could belatedly (by 20 months) file two applications – for a chopping board and a bowl respectively –  in Australia claiming priority from earlier European Community Design Registrations.  The evidence provided on behalf of the applicant suggested that the reason for failing to file the applications in time was merely that the applicant was unaware that the designs were not protected in Australia.

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Tags: Australia, Designs, Extensions of time

Extension of Time Granted to Correct Extension of Term Error

Aphapharm Pty Limted & Ors v H Lundbeck A/S [2011] APO 36 (1 June 2011)

Back in July last year, we reported on the decision in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (11 June 2009), which related to the refusal of a pharmaceutical extension 0f term for Lundbeck’s patent no. 623,144, which covers the S- or (+)-enantiomer of the antidepressant compound citalopram (see Pharmaceutical Extensions and International Inequities for further details).

A new Patent Office decision, by Hearing Officer Karen Ayres, is a direct consequence of the earlier Federal Court decision.  In particular, in an attempt to recover the patent term extension it had lost as a result of the court’s decision, Lundbeck filed a fresh application for an extension of term.  However, in order for this application to proceed, Lundbeck requires an extension of time of no less than 121 months, from the date upon which the request should have been filed originally.

The Patent Office initially proposed to grant the requested extension.  Four parties opposed.

Following a contested opposition, and a hearing, the Patent Office has confirmed the decision to allow Lundbeck extension of time within which to apply for the extension of term.

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Tags: Australia, Extension of patent term, Extensions of time, Pharmaceuticals

Attorneys Beware – Hospitalisation, Holidays No Excuse for Delay!

Woven Image Pty Limited v Autex Industries Limited [2011] APO 29 (10 May 2011)

Opposition – request for extension of time to serve evidence in support – whether hospitalisation of supervising attorney constitutes a satisfactory explanation of delay – whether unavailability of expert witnesses over holiday period constitutes a satisfactory explanation of delay

'You know, Bill, there's such a thing
as being too prompt and diligent!'

We have written previously on the difficulties faced by the Australian Patent Office in keeping opposition proceedings on-track, in view of the restraints imposed by the Federal Court on refusing requests for extensions of time under the current provisions (see Proceedings in Other Jurisdictions No Excuse for Delay).

Thus, although it is not mandatory to provide a satisfactory explanation in order to be granted an extension of time, it is generally necessary to provide some explanation for the delay.  And, even though the Office may ultimately grant an extension, after taking all of the relevant factors into account, it may nonetheless clearly indicate that the explanation provided is unsatisfactory.

This decision by Delegate Greg Powell is a case in point.  These types of decisions may take on more significance in the future, in providing guidance as to the circumstances in which it might be considered appropriate to grant extensions of time.  IP Australia’s reform agenda includes making amendments to the Patents Regulations 1991 which would prevent the grant of extensions of time in oppositions unless the Commissioner were satisfied that it is warranted in the circumstances (see IP Australia’s consultation paper Resolving Patent Opposition Proceedings Faster, pp. 12-13).  This change would make the explanation for any delay the primary consideration in deciding whether or not to grant an extension of time. 

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Tags: Extensions of time, Law reform, Opposition, Patent law

Proceedings in Other Jurisdictions No Excuse for Delay

Wyeth v The Kennedy Institute of Rheumatology [2010] APO 20 (21 September 2010)

Opposition – request for extension of time to serve evidence in answer – whether waiting for decision from the European Patent Office constitutes a satisfactory explanation of delay.

Current practices relating to the grant of extensions of time in Australian patent opposition proceedings are relatively generous, although IP Australia has clearly indicated its desire and intention to introduce a stricter regulatory regime in order to improve the speed and efficiency of an often drawn-out process.

Nonetheless, there are limits to the reasons that  may be considered acceptable excuses for delay, as this decision from Delegate Dr Steven Barker demonstrates.  Although the patent applicant in this case was granted the requested extension of time on other grounds (not least the fact that by the time the hearing took place the evidence had already been served), it is clear from this decision that waiting for an outcome in related proceedings in other jurisdictions is not, in itself, an adequate excuse.

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Tags: Extensions of time, Opposition

Google Fails to Unmask Anonymous Opponent

Google Inc. v David Brian Webber [2010] APO 17 (30 August 2010)

Opposition – request by opponent for extension of time to serve Statement of Grounds and Particulars – request by applicant for production of documents relevant to opponent's intention to serve Statement – identity of "opponent" and of opponent's "agent or attorney"

ANONYMOUS OPPOSITION

According to Section 59 of the Patents Act 1990, any person may oppose the grant of a standard patent.  There is no requirement that an opponent be an interested party, or be aggrieved by the prospective grant of a patent.

It therefore sometimes happens that an interested party who wishes to remain anonymous will oppose by proxy through an agent, most commonly a patent attorney.  Naturally, in such circumstances the patent applicant would prefer to know the identity of their "true" adversary.  In some cases, the applicant may find itself in settlement negotiations with a party whose nature and commercial interests are completely unknown.

There are therefore clear potential benefits in being an anonymous opponent, particularly in keeping the applicant guessing and on the back foot.  And while the case discussed here turned out well for the unknown party, it does suggest some possible risks associated with anonymous opposition.

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Tags: Extensions of time, Notice to Produce, Opposition

Serving Documents Electronically — Not as Simple as it Seems?

Spiral Tube Makers Pty Ltd v PIHA Pty Ltd [2010] APO 16 (27 August 2010)

Extensions of Time - date of service of document delivered electronically outside business hours - whether failure to serve in time electronically was a relevant "error or omission" justifying grant of an extension of time

ELECTRONIC COMMUNICATIONS — A PRACTICAL REVIEW

Electronic communications, such as via email and facsimile, are now widespread.  Indeed, for a variety of reasons, including speed, efficiency, the ability to track times of transmission and receipt, and environmental considerations, electronic communications are increasingly preferred, where practicable, over traditional mail.

It may therefore come as a surprise to some that electronic communication is not considered to be a simple alternative to traditional means of delivery under the law.  For most types of personal, business and informal communications, this is not relevant.  However, for various official purposes it is important to be ware of, and to follow, the legal provisions relating to electronic communications.

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Tags: Australia, Electronic communications, Electronic Transactions Act 1999, Extensions of time