Extensions of time: opposition – Kelvindale Products Pty Ltd v TFH Temporary Fence Hire Pty Ltd [2009] APO 25 (22 December 2009)

Date: 2010-02-01

Like most countries, Australian patent procedure is ostensibly comprised of a series of actions performed according to due dates in domestic legislation. However, one subtle difference is that almost any Australian due date can be extended, provided that because of an error or omission, or circumstances beyond the control of a relevant person (such as an applicant or attorney) the person was prevented from exercising an intention to complete an action required to be done by the due date.

Grant of an extension is discretionary and the general rule is that where an extension has been granted, it is because the Australian Patent Office (Patent Office) has found that an intention to complete an action was thwarted by error or other circumstance. There must be a ‘causal connection’ between the error and the act not being done.

So what happens where circumstances are such that an intention to complete an action could not be formed whereby a due date has been missed? This decision1 neatly answers the question and underscores the liberal approach applied by the Patent Office.

In the decision, the Patent Office considered whether a prospective opponent was entitled to an extension of time to oppose an application in circumstances where apparently prior to the due date, the prospective opponent had been aware of the subject application and opportunity to oppose it.

There is nothing new in the principle of law applied by the Patent Office:

‘…while the majority of cases will disclose a specific intention to oppose, with that intention being thwarted by the relevant error, there will be….. exceptional circumstances where no specific intention to oppose has been formed. In this case ….the relevant error precluded the forming of the specific intention’.

However, what is worth noting is the extent to which the Patent Office has expanded this principle so as to exercise discretion in favour of the prospective opponent where given the reported facts, there must have been some doubt as to whether an intention had not been formed.

The point is that if intention had been established there would then have been some question as to whether there was causal connection—that is, whether the attorney’s error could have thwarted the prospective opponent’s intention to file opposition—and therefore whether the extension application should have been granted.

What this decision tells us is that provided there has been a ‘full and frank disclosure of the events’ by a prospective opponent, it could well be difficult for an Australian applicant to repel an application to late file an opposition.

One wonders whether it will now also be easier to obtain an extension of time in relation to other key actions in Australian patent proceedings such as National phase and Convention filing, request for examination and acceptance.



1. Kelvindale Products Pty Ltd v TFH Temporary Fence Hire Pty Ltd [2009] APO 25 (22 December 2009)