Correspondence lost to spam filter justifies extension of time

Date: 22 June 2021
Forum:  Australian Patent Office
Delegate: Xavier Gisz

Background

As part of the Raising the Bar amendments introduced to the Patents Act 1990 (Cth) in 2013, rigorous new requirements for extension of time applications in patent oppositions were brought in to expedite the (often protracted) proceedings.

The new requirements mandate that the Commissioner must be satisfied that (a) the requester made all reasonable efforts to comply with all relevant filing requirements and was unable to meet the evidence deadlines despite acting promptly and diligently at all times, or (b) there were exceptional circumstances that warranted the extension. Exceptional circumstances include a circumstance beyond the control of the party that prevents it carrying out the relevant act and certain other circumstances.

Since this new standard has been introduced, decisions from the Patent Office have indicated that satisfying the Commissioner that an extension should be granted is onerous. Difficulties identifying and/or engaging an appropriate expert and intervening holidays and competing priorities of either the expert or attorneys are generally not persuasive, as the Patent Office appears to expect parties in oppositions to have contingency plans to address these issues as they arise.

Key Issues

During opposition proceedings between the applicant, Delinia, Inc (Delinia), and the opponent, QIP Nominees (QIP), Delinia filed a request for an extension of time to serve evidence in answer. The extension request was based on the fact that email correspondence relating to the opposition from the Australian attorneys to Delinia’s instructing US attorneys had been intercepted and destroyed by the US attorneys’ spam filter. Accordingly, the US attorneys were unaware of the Notice of Opposition, the subsequent filing of the Statement of Grounds and Particulars, and the evidence in support filed by QIP, until one month before the deadline for filing of the evidence in answer. Indeed, the opposition had progressed for more than 8 months by the time a reminder email fortuitously made it through the US attorneys’ spam filter, alerting the US attorneys and Delinia to the existence of the proceedings.

Initially, the request was refused by the Patent Office. While it could be accepted that the communication failure was unintended, in view of the Australian attorneys’ failure to follow up on the very important, unacknowledged emails, the Patent Office was not convinced that the “promptly and diligently” requirement had been met, nor that there were exceptional circumstances, since the email security issues were within the control of Delinia and those acting on its behalf. The Patent Office considered that “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 Patent Office also questioned the actions of the US attorneys and Delinia for failing to enquire about the grant of the patent, and even queried whether the spam filter had been subjected to appropriate checks to ensure it was not intercepting legitimate emails.

Delinia requested a hearing, arguing that the initial refusal was based on the Senior Examiner’s concept of a “counsel of perfection” formed in hindsight, and that it was reasonable to assume the emails had been safely received by the intended recipient.

Outcome

While noting that it could be envisaged that the circumstances could have been avoided with a follow up phone call, the Delegate considered that such speculation was beyond the realm of what was reasonably beyond the control of the parties. He concluded that the emails not being received (with no indication that the email was not delivered) was beyond the control of both the Australian attorneys and the US attorneys. Accordingly the circumstances were exceptional, and the extension of time was granted.

Implications

The Patent Office’s recognition that, in a modern day patent practice, unexpected difficulties may arise, and in particular that there are practical limits to what can be considered to be “acting promptly and diligently at all times” will come as welcome news to Australian patent attorneys and their overseas instructors.