Extensions of time and halts in patent proceedings

Introduction

This document provides guidelines on requests for extensions of time and halts in patent proceedings. The following information is intended to guide and inform parties involved in patent hearings. It reflects the current accepted practice of IPONZ and is intended to be read in conjunction with the:

• Patents Act 2013; and
• Patents Regulations 2014; and
• Patents Act 1953; and
• Patents Regulations 1954

These guidelines do not constrain the judgement and discretion of the Commissioner; each extension of time or halt request will be considered on its own merits.

Differences under the respective Patents Acts

Parties to a proceeding need to be aware that the provisions for extension of time and halts differ markedly depending on which Act governs the proceeding. See our ‘Which Act Applies’ page if you are unsure which Act governs your proceeding.

Under the Patents Act 1953, the Commissioner had a broad discretion whether to grant an extension of time in proceedings and could do so even if the extension of time request was received after the deadline for doing the step in the proceeding had already passed. Under the Patents Act 2013, the Commissioner’s discretion to grant extensions of time has been heavily curtailed to promote more efficient and timely proceedings. Under the Patents Act 2013 the Commissioner may only grant an extension request if the circumstances meet the thresholds prescribed in the regulations, and then, only if the extension request was received on or before the applicable deadline. Likewise, a request to halt the proceedings under the Patents Act 2013 must be received on or before the applicable deadline in the proceeding.

Extension requests under the Patents Act 2013

Regulation 161

If you need an extension of time to file a document or complete a step in the proceedings you must request an extension before the expiry of the current deadline.

Regulation 161 gives the Commissioner discretion to extend the time for a step to be taken in patent proceedings:

• for up to 3 months if the Commissioner is satisfied that the extension is reasonable in the circumstances; and
• for any period (whether or not in addition to a period that has already been granted on the basis of “reasonable circumstances”) if the Commissioner is satisfied that there are genuine and exceptional circumstances that justify the extension.

A party can request more than one extension under regulation 161(a) on the basis that the circumstances are “reasonable”, but the total period of extensions must not exceed 3 months. If a party wants any further extensions beyond 3 months they will need to satisfy the Commissioner that the circumstances meet the higher threshold of “genuine and exceptional”.

The request must be submitted online via IPONZ’s case management facility. IPONZ will consider whether the request for an extension of time meets the regulatory requirements and will notify both parties of its decision.

The onus is on the party requesting an extension of time to provide sufficient detail in its request, and in some cases evidence, to justify the extension. The party must satisfy the Commissioner that there are “reasonable” or “genuine and exceptional” circumstances that justify an extension of time. The Commissioner cannot be satisfied that such circumstances exist if the party requesting the extension has not provided any reasons to support its request.

The Commissioner will advise the parties whether or not the Commissioner proposes to grant the extension request. The adversely affected party has 10 working days to request a hearing on this proposed exercise of the Commissioner’s discretion under regulation 154. If the adversely affected party does not request an interlocutory hearing the decision becomes final.

Extension requests under the Patents Act 1953

Regulation 168

The Office considers the following time frames to be reasonable periods for extensions of time to complete steps in a proceeding:

• opposing a patent – one month to file the notice of opposition;
• filing the statement of case – two months, or with consent four months;
• filing evidence – a period not exceeding four months, unless there is evidence of exceptional circumstances;
• filing evidence in reply – two months, unless there is evidence of exceptional circumstances.

In making a request for an extension of time, the Office expects to be given detailed reasons for the request. The Office expects the request to outline:

• the reasons why it has not been possible to complete the required action, including details demonstrating there has been no lack of diligence on the party seeking the extension;
• the present status in completing the required action;
• what actions are outstanding to meet the extended deadline sought;
• an anticipated timetable;

Parties seeking extensions with the consent of the other side must also set out the circumstances that justify the extension.

Halt proceedings under the Patents Act 2013

Regulation 159

The purpose of a halt is to pause the proceeding. This allows the Commissioner to deal with related issues or matters that will directly affect the outcome of the proceeding, for example:

• settlement negotiations between the parties;
• procedural, pleading or evidential issues;
• instructions from the International Bureau;
• aligning deadlines in related proceedings to achieve operational efficiencies;
• the determination of other co-pending proceedings between the parties;
• confirmation of a task being completed such as deposit of security for costs or service of evidence.

The Commissioner can halt the proceeding on any terms and conditions that the Commissioner considers appropriate, but for no longer than 6 months at a time. The Commissioner may halt the proceeding for further periods, but on each occasion for no more than 6 months. If at any stage the Commissioner considers the halt is no longer appropriate, the Commissioner may lift the halt and recommence the proceeding.

The Commissioner may halt a proceeding on the Commissioner’s own initiative where appropriate. Some of the reasons to do so are outlined above. IPONZ will inform both parties of the Commissioner’s proposal to halt the proceeding on the Commissioner’s own initiative, and the reasons why it is considered appropriate.

If the parties need time to negotiate a settlement agreement they should request the Commissioner to halt the proceedings rather than request an extension of time. The request for a halt should be countersigned by the other party to show their consent to the halt.

Halting the proceedings stops the clock, allowing the parties time (up to 6 months) to come to an agreement without having to respond to proceedings deadlines. This is preferable to parties using up any time for extensions available to them while negotiating a settlement agreement.

While it is appropriate to halt a proceeding to allow for settlement negotiations because they have the potential to achieve an efficient resolution of the dispute, should the negotiations become protracted the Commissioner may decline further halt requests (even when signed by both parties) on the basis of public interest in both:

• achieving certainty on the register for third parties; and
• progressing proceedings in a timely manner.

Whether or not further halt requests will be granted will depend on the circumstances of each case. Generally speaking, the longer a proceeding has been halted the more supporting documentation and information that will be required to satisfy the Commissioner that it is appropriate to continue the halt.

A request for a halt will be refused if:

1. no reasons are given for the request; or
2. if the deadline for the particular step has expired i.e. the request for the halt was not received on or before the relevant deadline.

The Commissioner will advise the parties whether the Commissioner proposes to either:

• halt the proceedings on the Commissioner’s own initiative; or
• to refuse or accept a party’s request to halt the proceeding.

The adversely affected party has 10 working days to request a hearing on this proposed exercise of the Commissioner’s discretion under regulation 154. If the adversely affected party does not request an interlocutory hearing the Commissioner’s proposal becomes final.

If the parties have not responded on or before the end of the relevant halt period, the proceedings will automatically be recommenced from that date. In situations where the current deadline for completing the next step in the proceeding has already expired, or is less than 1 month away, IPONZ’s practice when recommencing the proceeding is to allow the party responsible for completing the current step in the proceeding a further 1 month to complete that step. In effect, the Commissioner is halting the proceeding on the Commissioner’s own initiative for a further 1 month to allow the current step in the proceeding to be completed.

Halt proceedings under the Patents Act 1953

Regulation 168

The Office will normally accept a request to halt proceedings under the 1953 Act on the following terms and conditions:

• the onus is on the party initiating the request for a halt to obtain the written consent of the other party;
• once the halt has been granted the proceeding is stopped at the point it had reached when halted;
• the halt in proceeding is not expected to exceed six months;
• either party may withdraw their consent to the halt at any time and the proceeding must recommence;
• the Office will recommence the proceeding allowing one month for the taking of the next action.