Author: Donna Meredith
Key points
With the implementation of the ‘Raising the Bar Act’[1] in 2013, IP Australia tightened the reins on granting extensions of time to file evidence during patent oppositions. The purported aim of the tougher restrictions is to minimise unnecessary delays, resulting in faster decisions and reduced uncertainty.[2]
As the dust of the second anniversary of the amendments settles, we glance back and review how IP Australia has interpreted the new regulations and learn from the successes and disappointments of cases past.
Upon a review of over twenty APO decisions, things initially appeared grim, with five of the first six applications refused. While still strictly adhering to the new restrictions, the situation appears to be improving, with the trend in recent decisions being towards a favourable outcome for the extension applicant. A central theme intertwining all cases has emerged; that convincing support is imperative if the Commissioner is to be persuaded that the extension is justified. Crucial to this support is a comprehensive narrative detailing:
- the opposition strategy being followed;
- how every event fits into that strategy;
- the issues which triggered the extension request; and
- how the strategy was modified as necessary.
Despite the upward trend in successful extensions, the most prudent course, however, appears to be to crack the opposition whip and avoid the need for them altogether!
The full version of this article can be found at: Australian Intellectual Law Bulletin (Lexis Nexis), 2015. Vol 28 No 9-10, pp282-286
[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 page 1.