Nobody wants to disclose sensitive information to gain a position in a smaller market if that means giving up hard-won gains in a larger market. This is why this decision, relating to service of evidence in Australian patent opposition proceedings, is interesting.
As most would know, the parties to opposition proceedings are required to serve evidence according to due dates prescribed under the Australian patents regulations. The due dates may be extended provided that the Commissioner is satisfied that an application to extend time for service of evidence is appropriate in all the circumstances. If the Commissioner is not satisfied that an extension is appropriate, a party may effectively be precluded from proving their case.
The onus is on the extension applicant to establish the circumstances culminating in a failure to have evidence ready for service by a due date. While the legal position is that a full and frank disclosure of the circumstances is not required, the Commissioner has a discretionary power to refuse an application where an extension applicant does not explain the reasons for delay in evidence preparation.
What this decision shows is that there may be an 'out' for the extension applicant where the applicant cannot give reasons for delay because of the commercial or legal context relevant to the opposition proceedings. More specifically, where the nature of the evidence to be procured foreshadows a serious opposition having implications for the public interest, the Commissioner may grant an extension application where no reasons for delay have been given.
Endnotes
1. Macquarie University v HealthLinx Limited [2009] APO1
This article was written by Tom Gumley, Partner, Freehills Patent & Trade Mark Attorneys.
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