By Linda Govenlock, Senior Associate
It is typical in patent oppositions for costs to follow the event. However, recent Australian Patent Office decisions reflect a change in this practice in relation to objections to an extension of time to serve evidence where the initial application was deficient.
In Meiji Dairies Corporation v Fonterra Co-operative Group Limited, the opponent (Fonterra) belatedly sought an extension of time to serve its evidence in support of its opposition to a patent application owned by Meiji. In its initial application, Fonterra indicated that the reason for the extension was the unavailability of an expert witness and delays for personal reasons. Meiji objected to the extension being granted.
The Hearing Officer agreed with Meiji that the initial explanation provided by Fonterra to justify the extension of time was 'severely lacking', but decided that Fonterra had followed up with sufficient details during the hearing to justify the extension of time being granted.
Fonterra ultimately succeeded in obtaining an extension of time but no award of costs was made.
This approach reflects earlier decisions in Apotex Pty Ltd v Les Laboratoires Servier and Osmoses Australia Pty Ltd v Kippers Arch Wood Protection (Austl) Pty Ltd in which the Hearing Officer criticised the use of a 'two step' process for explaining the need for an extension of time to serve evidence.
It is therefore important to provide sufficient details at the time of filing an application for an extension of time to improve the chances of favourable consideration and lower the risk that the other side will object to the extension of time - particularly as the other side may be emboldened by the reduced prospect of having costs awarded against it if unsuccessful at the hearing.