Tougher Criteria for Obtaining Extension of Time to File Evidence in Opposition Proceedings

Among the changes introduced by the ‘Raising the Bar’ Amendment Act 2012 was the tightening of the criteria for obtaining an extension of time for filing evidence in opposition proceedings. IP Australia has now published a factsheet outlining how it will apply those criteria in determining requests for an extension of time.

Under the new test as given by regulation 5.9 the Commissioner may extend an evidentiary period in a substantive opposition only if the Commissioner is satisfied that:

• the party who intended to file evidence within a relevant evidentiary period has made all reasonable efforts to comply with all relevant filing requirements; and despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
• there are exceptional circumstances that warrant the extension.

IP Australia will apply this test to all substantive oppositions commenced on or after 15th April 2013 and to all substantive oppositions commenced before that date where the evidentiary period sought to be extended started on or after that date. The duration of any extension granted will be at the Commissioner’s discretion. If an extension is refused any evidence filed after the required time has lapsed will not be admitted. The duty to act promptly and diligently applies not only to the party seeking the extension of time, but also to their agent or legal representative or to an expert whose opinion or other declaration has been sought.

Examples of exceptional circumstances are:

• a circumstance beyond the control of a party that prevents the party from complying with a filing requirement;
• an error or omission by the Commissioner that prevents a party from complying with a filing requirement;
• an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action.

Examples of circumstances that cannot be regarded as exceptional are:

• an expert being unavailable for periods of time due to leave, work commitments, personal commitments or even short periods of illness;
• if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, the sudden loss of the preferred expert is not an exceptional circumstance;
• settlement negotiations.