Time for a Change?
Australia has a pre-grant patent opposition procedure. This means that, after a patent application has been advertised as accepted (i.e., “allowed” in US terms), any third party has a period of three (3) months in which to oppose the grant of a patent on the application. Because patent infringement proceedings cannot be commenced until the patent has been granted, an Australian patent opposition can be used as a strategic tool to prevent or delay anticipated infringement proceedings.
Australian patent opposition procedure includes the following stages:
- Filing of a Notice of Opposition by the Opponent
- Filing of a Statement of Grounds and Particulars by the Opponent summarising their case
- Evidentiary stages that include the Opponent’s Evidence-in-Support, the Applicant’s Evidence-in-Answer, and the Opponent’s Evidence-in Reply
- Written submissions for, and attending, a hearing, after which a decision is issued.
Requirements for obtaining an extension of time to file evidence
In the past, many Australian opposition proceedings were drawn out over long periods of time because obtaining extensions of time in which to file evidence was relatively straightforward and the extensions were generally granted without detailed justification. As a result, patent oppositions could remain unresolved for a number of years. Upon review of the Australian patent system, however, such lengthy opposition proceedings were considered to introduce uncertainty into the market and not to be in the public interest. In 2013, therefore, the Australian Patent Regulations were revised to significantly raise the threshold requirements for obtaining an extension of time to file evidence in a patent opposition.
Current Regulation 5.9(2) provides that the Commissioner of Patents may extend an evidentiary period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i) has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii) despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
(b) there are exceptional circumstances that warrant the extension.
The stringent interpretation and application of the amended regulations was a gamechanger as the first five out of seven Patent Office decisions to consider extension of time requests under the new regime refused to grant an extension of time. In fact, the regulations have been so strictly applied, that one commentator has noted “the Patent Office considers that experts, once engaged, should be expected to work while on vacation, if that is what it takes to meet the evidentiary deadlines!”
The amended regulations have undoubtedly reduced the time taken for the completion of some oppositions. However, in certain circumstances, the considerably more ‘hard-line’ approach to extensions of time adopted by the Patent Office also results in lengthy delays to the opposition proceedings, as illustrated in the following case study.
Australian patent application 2016269707, directed to a syringe support and autoinjector, was advertised as accepted for grant in December 2020 and was opposed in March 2021. The Opponent filed its Evidence-in-Support within the prescribed time period. However, the Applicant was unable to file all of its Evidence-in-Answer by the prescribed deadline and requested an extension of time of one month to complete its Evidence-in-Answer. A timeline of events that followed the Applicant’s request for an extension of time is set out below.
- 22 December 2021: Applicant files part of its Evidence-in-Answer, as well as a request for a one-month extension of time to file the remainder of its Evidence-in-Answer.
- 24 December 2021: Patent Office requests further information from the Applicant.
- 18 January 2021: Applicant files the remainder of its Evidence-in-Answer.
- 21 January 2022: Applicant files further information in support of its extension of time request.
- 25 January 2022: Patent Office determines that Regulation 5.9(2)(a) requirements are not met.
- 8 February 2022: Applicant submits further information in support of its extension of time request and advises that a hearing is required in the event of an intended refusal.
- 15 February 2022: Patent Office refuses the Applicant’s extension of time request.
- Hearing, by written submissions, set down for July 1, 2022.
According to the IP Australia customer service charter, hearing decisions should be issued within three months of the date of the hearing. In practice, however, hearing decisions can often take considerably longer than that. At the time of writing (31 January 2023), no hearing decision has yet issued in relation to the extension of time request for application 2016269707. Essentially, what this means is that, for want of a one-month extension of time in which the Evidence-in-Answer was then completed, the opposition procedure has been protracted for over a year. And aside from creating excessive procedural delay, the Patent Office’s application of Regulation 5.9(2) sets such a high threshold for even a one-month extension of time to complete evidence, that the parties can be unduly hindered in presenting their respective cases. This is clearly not in the interests of the parties, and it also does not serve the public interest in having a fairly and robustly contested opposition procedure.
Regrettably, this particular case study is not an isolated case. When the interests of neither the parties themselves nor the public are served, the Patent Office appears to be losing sight of its raison d’etre in these cases, creating the impression of bureaucracy as an end in itself.
Time for change
The significant delay in the opposition to application 2016269707 could have readily been avoided, and perhaps even a decision on the opposition issued, had the Applicant simply been permitted a one-month extension of time to complete its Evidence-in-Answer. In other words, the tough stance taken by the Patent Office on extensions of time in patent oppositions can clearly result in the exact opposite of its intended purpose, and potentially also compromise the procedure itself.
For this reason, the Patent Office should consider modifying its interpretation and application of Regulation 5.9(2) for extensions of time in patent oppositions in keeping with the interests of the parties and the public. This could, for example, involve more nuanced interpretation and application of the regulations with a lower threshold for first extension of time requests, especially where the evidence is then completed, and a higher threshold for subsequent extension of time requests. Alternatively, the Patent Office may wish to consider some corresponding revision of Regulation 5.9(2). This fine tuning of patent opposition practice would not result in significant delays to patent oppositions. On the contrary, it would help prevent unnecessary and lengthy opposition delays of the type seen for Australian application 2016269707.
About the Authors
Wrays Principals Grant Shoebridge and Philip Gehrig are elected council members of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA), the peak body representing Australian Patent and Trade Mark Attorneys.