Has Raising the Bar’ on filing patent opposition evidence met its objectives? A brief look at the numbers…
It has now been more than four years since the ‘bar was raised’ on seeking extensions of time to file patent opposition evidence (EOT). Parties applying for an EOT must now demonstrate that:
- actions taken to gather evidence have been reasonable, prompt, and diligent, or
- exceptional circumstances apply which would warrant an extension.
The new criteria were introduced because, according to the relevant Explanatory Memorandum, the Commissioner had lacked sufficient discretion to refuse EOTs. In other words the earlier criteria were considered too lenient and, according to the Explanatory Memorandum, led to overuse of the EOT system and unnecessary opposition delays.
This article takes a look at the numbers to consider the effect of the current criteria.
Has the number of EOTs reduced?
To put it mildly, the effect of the current criteria has been dramatic. EOT applications have reduced from 650-800 per year during 2010-2012 to 20-30 per year during 2015 and 2016. This represents a 97% reduction in EOT applications.
EOT approval rates also reduced during this period, though to a lesser extent. EOT approval rates under the earlier system dropped from 98% between 2010 and 2012 to 76% between 2014 and 2016.
Has reg 5.9 reduced the delay in opposition proceedings?
The average time to decision from filing the Notice of Opposition also from a high of 1788 days (five years 11 months) for patent applications opposed in 2008, to 598 days (1 year 8 months) for those opposed in 2015. Given a typical patent’s maximum term of 20 years, it was probably reasonable to seek to reduce the average duration of an opposition from six years.
The gradual reduction from 2008 reflects how the new criteria only applied to those evidentiary periods (of which there are three during an opposition) that commenced after its introduction (those having commenced previously continuing under the earlier criteria). This meant that for several years oppositions could comprise evidentiary periods administered under different regulations.
The hearings squeeze
More recently filed oppositions (administered under the current criteria) have progressed rapidly alongside earlier filed but more slowly progressed oppositions, leading to an overlap. While eight patent oppositions were decided 2012, 55 were decided in 2015.
Why the dramatic drop in EOT requests being made?
It is not surprising that the new criteria have led to fewer EOT applications. However the extent of the reduction (i.e. 97%) may still be surprising. While the new criteria have inevitably led to more time-efficient practices, fear of the consequences of EOT refusal may also be a factor leading practitioners to avoid applying for otherwise allowable EOTs.
I would expect the number of EOT applications, and the acceptance rate of those applications, to rise gradually over the coming years (though not to previous levels) as practitioners become more comfortable with the new criteria.
Time will tell whether EOT applications continue to be applied or approved for at current rates. Moving forward it is worth repeating some useful approaches that have developed to manage the new criteria:
- plan early and take a strategic approach to obtaining evidence. Make reasonable efforts to plan around foreseeable delays such the Christmas break or the unavailability of a specific expert;
- detail your EOT application with the what, when and why (i.e. what was done, when was it done, and why was it done that way). It is possible to explain delays where reasonable steps have been taken to avoid them or minimise their effect; and
- file on-hand evidence while applying for an EOT to obtain further evidence. This takes out most of the risk when applying for an EOT.
Noting that that reasonableness, promptness and diligence do not require perfection – it is hoped steps such as these will allow practitioners and their clients to grow more comfortable with (and less fearful of) the current criteria.
Rhys Munzel, Patent Attorney & Lawyer
28 September 2017
 Explanatory Statement, Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) (Cth).
 Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd  APO 63 at .