IP SPOTLIGHT MARCH 2020

FALLING IN LINE WITH REG 5.9 What does COVID19 mean for your patent opposition?

(i) Reasonable efforts

On 19 March 2020, IP Australia issued a statement that extensions of time may be available to Applicants affected by COVID-19. Requests for extensions of time need to be made in the normal way, including filing a declaration setting out how the COVID-19 outbreak interfered with responding in time. They also went so far as saying that requests for fee relief will also be considered on a case-by-case basis. The statement made by IP Australia did not limit the type of extension of time, rather it was directed broadly to any extension of time sought within the confines of the Australian patent legislation. In this article we explore more specifically how such extensions of time might be required during a patent opposition. THE REQU I REMENTS FOR AN EXTENS ION OF T IME Regulation 5.9 specifies that a party requesting an extension will need to convince the Commissioner that: – – despite having acted promptly and diligently at all times, and despite having made all reasonable efforts, they were unable to meet the filing deadline; or – – there are exceptional circumstances that warrant the extension. Thus, an application for an extension of time to serve evidence in a patent opposition can be founded on either of two different premises: – – the party seeking the extension has made all reasonable efforts to comply with the deadline, acting promptly and diligently at all times but was unable to meet the filing deadline; or – – exceptional circumstances arose that prevented the evidence being completed in the specified period. This raises a question as to what these different arms of the extension of time provisions might require for each to be satisfied.

The “reasonable efforts” provision requires that the parties act reasonably at all times. Therefore, parties need to plan for absences and consider alternative measures if there is a delay, such as the absence of an expert 4 . Expert absences later in an opposition will be better tolerated than early in the opposition since there may be significant value in using the same expert as in earlier evidence stages 5 . Importantly, parties must provide sufficient information about the steps taken to accommodate an absence or their absence may still be considered unreasonable 6 .

(ii) Exceptional Circumstances

An exceptional circumstance is a matter outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on the party filing their evidence.

According to Reg 5.9(5), “exceptional circumstances” include:

a. circumstances beyond the control of the party that prevent the party from complying with a filing requirement; b. errors or omissions by the Commissioner that prevent the party from complying with a filing requirement; or c. 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 under the Act. Predictable events, busy work periods, national holidays and diversion of attention will not be considered exceptional circumstances if they could have been anticipated and acted upon 7 .

Following the implementation of the Raising the Bar Act in 2013 1 , IP Australia tightened the reins on granting extensions of time 2 to file evidence during patent oppositions under restrictions governed by Reg 5.9 of the Patents Regulations 1991. The purported aim of the tougher restrictions was to minimise unnecessary delays and create greater transparency and certainty for the public as a result of faster decisions 3 .

COV I D-19 AND EXTENS IONS OF T IME On 11 March 2020, COVID-19 was declared a global pandemic by the World Health Organisation. It is the largest world health crisis seen in a generation. COVID-19 has caused restrictions on the movement and circulation of persons, as well as on services, exchanges and public life in general, resulting in unprecedented lockdowns, social distancing and restrictions across the globe. This situation is rapidly evolving in Australia and has resulted in the closure of many non-essential services and the loss of countless jobs. As COVID-19 proceeds to shut down nations at an alarming rate, it is only natural to question what affect this will have on IP rights.

1 Intellectual Property Laws Amendment (Raising the Bar) Act 2012. 2 Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (Explanatory Statement) at p 1. 3 Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (Explanatory Statement) at p 1. 4 Merial Ltd v Novartis [2013] APO 65 (Merial)

4 Merial Ltd v Novartis [2013] APO 65 (Merial) 5 Innovia Security Pty Ltd v Visual Physics LLC14 (Innovia), 6 Merial Ltd v Novartis [2013] APO 65 (Merial) 7 Tabcorp and Cantarella Bros Pty Ltd v Nestec SA (Cantarella)

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