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  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:
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.
there are exceptional circumstances that warrant the
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
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
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
The Orekinetics decision can be compared to both TRED Design
Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy 
 APO 57, and Merial Limited v Novartis AG  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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).