'Acting responsibly, promptly and diligently during evidentiary periods'

Tuesday October 7, 2014

The below article from 30 September 2014 has been provided by Melissa McGrath, Partner & Khim Wooi, Lawyer from DibbsBarker.

What standard should be met to obtain an extension of time to file evidence in patent opposition proceedings? Since the introduction of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1), what constitutes ‘reasonable, prompt and diligent’ action has required clarification. The recent decision of Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63 (the Orekinetics decision) provides insight into what constitutes an adequate explanation for obtaining an extension to file evidence in answer.

Here Orekinetics failed to file its evidence in answer during the allocated three month period. However, its application for an extension of two months was accepted because its actions were held to be reasonable, prompt and diligent.

Under subregulation 5.9(2) of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1), the Commissioner may extend the period only if the Commissioner is satisfied that:

  1. the party who intended to file evidence in the period made all reasonable efforts to comply with all relevant filing requirements, and the failure to comply was despite the party acting promptly and diligently at all times to ensure the evidence was filed on time. Or,
  2. there are exceptional circumstances that warrant the extension.

In granting the extension, the delegate considered the full range of Orekinetics’ commitments during the allocated period and its resources, to conclude whether Orekinetics took reasonable, timely steps to overcome the delays. The facts included:

  • Orekinetics was a small company with only four employees
  • a single employee held responsibility for IP matters. When this employee was unavailable, no decisions could be made on IP matters
  • the employee in question was unavailable for approximately one month during the evidence period because he took leave to attend his farm due to a declared drought, during which time communication was limited
  • due to this unavailability, Orekinetics was not informed by its patent attorney of the deadline for filing evidence in answer until approximately one month before the deadline, at which point they elected to change their patent attorney.

The delegate considered that Orekinetics acted quickly once they became aware of the deadline. The events of the drought and the change of patent attorney placed the employee’s inaction in context.

The Orekinetics decision can be compared to both TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] [2013] APO 57, and Merial Limited v Novartis AG [2013] APO 65, where the Commissioner held that parties had not acted promptly and diligently despite evident periods of delay, and subsequently refused applications for extensions of time. In those cases the delegate considered the parties had provided inadequate explanations, in effect asking the Commissioner to assume diligence without disclosing enough of the basis for that conclusion.

The Orekinetics decision demonstrates the importance of a full explanation of the reasons for any delay in filing evidence and the steps taken to address these problems (rather than merely a chronology), to support any request for extensions.

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