Extensions of time: Is The Patent Office more diligent than a Patent Attorney?

An extension of time to file evidence in an opposition has ultimately been found allowable on the basis of “other circumstances” - where emails regarding deadlines were sent but not received due to a blocklist - nor were any follow up phone calls made.  

Extensions of time to do certain acts under the Patents Act 1990 are available subject to requirements and regulations - which are more pointed in patent oppositions. To avoid opposition matters dragging out - the Australian Patent Office is reluctant to easily dole out extensions of time to provide evidence.  

Therefore, under Reg 5.9, the Commissioner of Patents has discretion to allow the extension of time to serve evidence in the opposition provided she is satisfied that the “requestor” has made all reasonable efforts to comply with all relevant filing requirements and acted promptly and diligently at all times to ensure the appropriate evidence was filed within the period. The commissioner also has discretion to allow the extension of time in any event - if there are exceptional circumstances that warrant the extension.

In a recent Australian Patent Office decision QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 (22 June 2021), an extension of time to file Evidence in Answer was allowed by the Delegate of the Commissioner of Patents despite the “Hearings Branch” of the Australian Patent Office rejecting the extension on the basis that the applicant had not acted promptly and diligently and that “other circumstances” did not apply.

Background

The Australian attorneys (AU attorneys) acting for the patent applicant sent a number of emails over the course of a year to the applicant’s US attorneys (“US attorneys”) to advise that the patent had been opposed and various deadlines were coming up. The AU attorneys received no communication back from the US attorneys regarding these emails, nor did they receive a bounce-back, error messages or the like regarding the email communications. The deadline for the applicant to serve their Evidence in Reply in full was then missed – hence the extension request.

Hearings Branch says NO

While the Hearings Branch accepted that the email communication failure was unintended, the Hearings Branch were not persuaded on the evidence that the AU attorneys were acting reasonably and promptly and diligently. 

The Hearings Branch noted that:

“is reasonable to believe that the information associated with those emails would generally elicit a response and the failure to do so, especially over an extended period of time and in view of the strict deadlines in opposition matters, is quite remarkable and failing to follow up on the lack of response does not appear to be commensurate with acting reasonably or promptly and diligently.”

 “The lack of any further enquiries does not seem reasonable, even if this was the “usual” practice, given the strict timelines that apply in opposition matters for filing evidence, for example, of which [the attorneys] would be well aware.”

The AU attorneys in response asserted that there are many reasons why a client might not respond to an email and just because they don’t respond does not create a duty on the part of a patent attorney to follow up.  They also asserted that the approach of the Hearings Branch to make any number of follow up emails and telephone calls is a “is a counsel of perfection, made with the benefit of hindsight”.  The AU attorneys also pointed out that email is largely reliable and users are used to seeing a non-delivery or bounce-back if an email is not delivered. Consequently, with no bounce-back it is reasonable to assume that the email has been safely delivered.

The AU attorneys also argued that it would be burdensome to require a patent attorney to follow up an email with some non-email form of communication, such as a phone call when for example there are time differences involved and telephone calls are typically arranged in advance by email which in this case, would not have been received in any event. 

The Hearings Branch was not persuaded.

Delegate says YES

As a result, a request to be heard in the matter was filed by the AU attorneys. The Delegate of the Commissioner of Patents was persuaded under 5.9(2)(b) that there were other circumstances that warranted the extension - noting that email security measures had been implemented by the US attorneys to prevent cyber attacks which inadvertently and erroneously identified the AU attorneys emails cyber attack emails and as such were never received and weren’t redirected into a spam filter. 

On the subject of follow up calls, the delegate noted “Although with the benefit of hindsight it can be envisaged that the situation could have been avoided (such as [the AU attorneys] making a ‘follow up’ phone call when no response was received to the 8 emails), such speculation is beyond the realm of what was reasonably beyond the control of the parties.

The Delegate of the Commissioner of Patents granted the extension to file Evidence in Answer.