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A recent Patents Office decision serves as a reminder of the importance of diarising the time in which notices and responses must be given to the Office during opposition proceedings. Failure to lodge notices on time can mean that evidence is excluded.

In Osmose Australia & TimTech Chemicals v Koppers Arch Wood Protection [2009] APO 2, Koppers had applied for a patent for a method of treating timber, and Osmose and Timtech had opposed the patent on various grounds. The parties were engaged in the normal patent opposition process of exchanging evidence about the opposition.

Under the relevant regulations, Koppers had one month to serve a particular notice about its evidence, the deadline expiring on 19 October 2008. However, Koppers (through its patent attorney) missed that deadline, not realising until 24 October that the notice was due, and not filing it until 30 October.

Osmose and TimTech objected to the late notice, and argued that the material should not now be accepted, because Koppers had missed the deadline.

In the decision, the delegate of the Commissioner of Patents confirmed that the Commissioner has a discretion to extend deadlines, which can be exercised after consideration of the relevant circumstances.

In this case, there was an explanation of the delay, which was simply that Koppers' patent attorney forgot. The error was rectified a few days after it came to the attorneys' attention. The delegate considered this was a satisfactory explanation of the delay. The delegate also considered the public interest in allowing Koppers' evidence to be filed (that is, in having all relevant evidence available in the opposition proceedings).

The decision stands as a reminder that organisations and attorneys involved in patent opposition proceedings need to be acutely aware of the applicable time limits in each stage of the proceedings. In this case, even though the time was extended, it was an embarrassing (and potentially costly) episode for Koppers' attorney, and could weaken Koppers' position in settlement negotiations.

Patrick Sefton
Brightline Lawyers
13 February 2009
Do not rely on these notes—obtain specific legal advice.