IP SPOTLIGHT MARCH 2020

WHAT DOES I P AUSTRAL I A’S SAY ABOUT COV I D-19? IP Australia has stated that: “…the effects of the COVID 19 outbreak is an unprecedented situation that may have an impact on the ability of applicants and their representatives to process applications. Where an applicant cannot carry out an action within time due to the COVID 19 outbreak an extension of time may be available.” The announcement by IP Australia then noted that some time periods cannot be extended but fell short of providing any specific examples. The statement by IP Australia is notable in that it does not provide a guaranteed extension. Instead IP Australia has largely said that it will consider each application for an extension of time on its merits. Therefore, it remains to be seen how this statement will interplay with the elements for granting an extension of time to serve evidence in a patent opposition. Filing an extension of time in a patent opposition and relying on COVID-19 Extensions of time to file evidence during patent oppositions have in the past been notoriously difficult to obtain. Clearly, the COVID-19 pandemic has caused significant disruption to the business, scientific and engineering community. One does not have to look too hard to see that this unprecedented pandemic could constitute an “exceptional circumstance” within the provisions of reg 5.9; being a circumstance beyond the control of a party that prevents that party from complying with an evidentiary filing requirement. That said, IP Australia’s notice to the Australian IP community does not reach that far. IP Australia merely states that applications will be considered on their merits.

While the COVID-19 pandemic might form the basis for establishing the existence of exceptional circumstances for granting an extension of time, we strongly believe that an applicant wanting to obtain an extension of time will need to show that they have made “all reasonable efforts” to act “promptly” and “diligently at all times” to prepare their evidence. Applicants should not assume that the COVID-19 pandemic is automatically going to provide a basis to extend a time limit in an opposition. Evidence of diligent effort to pursue the collection of evidence will most likely be essential to the grant of any extension of time application. A request for an extension of time due to a COVID-19 related delay should be filed as early as possible and preferably before the deadline. It should also be accompanied by a declaration setting out the exact details of how the COVID-19 pandemic caused the delay. As with all extensions requested during a patent opposition, a chronology of events and a detailed description of what was done, when it was done and how it was done should be provided together with a detailed description of how COVID-19 affected the strategy. A detailed description of the reason for any gaps should also be provided to support the request. Regarding absences and illness of experts, the Explanatory Statement to the new provisions states that “if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, then the sudden loss of the preferred expert is not an exceptional circumstance”. This was also followed in the Tred decision 8 . Therefore, in and of itself, the illness of an expert due to COVID-19 may not be considered an exceptional circumstance if other experts could have been called upon. It is noteworthy that the surprise illness of an expert late during the evidentiary period has been considered an exceptional circumstance in the past because the illness occurred at a time when it was too late to call another witness 9 . Importantly, what became clear, was that it was essential to the requestor’s case to provide detailed support regarding when the illness occurred and whether or not other experts could have been used. We anticipate that the same may apply for applicants, opponents and their attorneys during the COVID-19 pandemic. Thus, in the event

– – prepare evidence on the understanding that any applications for extensions of time may be denied; – – request extensions as early as possible; preferably so that the matter can be decided before the evidence deadline; – – file what you have, or if you are the patent applicant, consider attempting to resolve the opposition by amending the claims and requesting a stay in proceedings; and – – most importantly, do not expect the delegate to presume you have acted in a prompt, diligent and reasonable manner, but rather provide evidence to convince them of it. Despite the tough approach employed by IP Australia, it appears that the trend in recent decisions is currently towards the grant of an extension. However, it is clear from these decisions that the days of short and easily obtainable extensions are behind us. Oppositions are becoming a specialised area of practice, requiring sophisticated project management strategies. While extensions are still obtainable, they are no longer a fait accompli and instead should be regarded as an absolute last resort. The manner in which IP Australia will view delays caused by COVID-19 is yet to be seen. However, we recommend that parties proceed with caution and presume that the same detailed evidence to support the request will still be required during the COVID-19 pandemic and beyond. If you have any questions on how COVID-19 may affect your opposition proceedings, please contact Wrays.

that a party becomes affected by COVID-19 in any way, it will be necessary to show why other persons could not be used in their place. Based on IP Australia’s decisions, we consider that it is going to take more than a simple throw-away line that COVID-19 caused delays to obtain the extension. Parties will still need to show that; – – they have acted promptly, diligently and made all reasonable efforts to comply with the deadline at all times; and – – that despite a carefully executed and adaptable strategy, delays caused by COVID-19 could not be avoided. However, given the unpredictability of the current situation, we do consider that the office may take a more lenient approach to what is considered prompt, diligent and reasonable during the COVID-19 pandemic, compared to other circumstances. – – Immediately prepare a formal COVID-19 strategy for managing the entire opposition, outlining the critical pathway, key milestones and nominal deadlines; presume your entire strategy will be managed remotely and explain how technology may affect your strategy; modify the strategy as necessary; – – record all activity, including action taken to address potential delays and modifications to the strategy; explain any periods of apparent inactivity; problem solve quickly as any obstacles arise; – – engage experts early; enquire regularly about their health and any other interfering events; plan for delays and absences; identify and/or retain back-up experts; – – show that you have acted reasonably, promptly and diligently at all times (not just sometimes); – – where possible, always continue preparing evidence, in spite of any distractions, setbacks or settlement negotiations; if a member of your party contracts COVID-19, obtain a medical certificate as proof and look for alternative solutions; Useful tips for navigating an opposition during the COVID-19 pandemic

CRAIG HUMPHRIS Principal

DONNA MEREDITH Associate

8 TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 (11 November 2013) 9 UON v Taranis Power group [2019] APO 6

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