CDB Goldair Australia Pty Ltd v SharkNinja Operating LLC
[2025] APO 35
•10 October 2025
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CDB Goldair Australia Pty Ltd v SharkNinja Operating LLC [2025] APO 35
Patent Application: 2022252800
Title:COOKING DEVICE AND COMPONENTS THEREOF
Patent Applicant: SharkNinja Operating LLC
Opponent:CDB Goldair Australia Pty Ltd
Delegate:M. Umehara
Decision Date: 10 October 2025
Hearing Date: 24 September 2025
Catchwords: PATENTS – extension of time to file evidence in answer – regulation 5.9 – settlement negotiation during opposition proceedings – communication error – miscalculation of stay – failing to prepare evidence during evidentiary period and stay is not all reasonable efforts to comply with filing requirements – prompt and diligent action not established – exceptional circumstances not established – extension refused.
Representation: Counsel for the applicant: Joe Petry
Patent attorney for the applicant: Corrs Chambers Westgarth
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2022252800
Title:COOKING DEVICE AND COMPONENTS THEREOF
Patent Applicant: SharkNinja Operating LLC
Date of Decision: 10 October 2025
DECISION
Extension of time to file evidence in answer refused.
REASONS FOR DECISION
Background
Patent application 2022252800 (the Application) was filed in the name of SharkNinja Operating LLC (the Applicant) on 13 October 2022 as a divisional of 2020314733 (the Parent Application). Acceptance of the Application was advertised on 7 March 2024. A Notice of Opposition was timely filed by CDB Goldair Australia Pty Ltd (the Opponent) on 7 June 2024. Statement of Grounds and Particulars (SGP) as well as the Evidence in Support (EIS) were duly filed on 9 September 2024 and 9 December 2024, respectively. The Evidence in Answer (EIA) was therefore due on 10 March 2024.
This decision concerns the request for an extension of time under Regulation 5.9 to file the EIA. I note that the opponent did not seek to be heard in this matter.
On 14 February 2025, the Opponent submitted a request on behalf of both parties for a stay of the S59 Opposition for a period of one month to facilitate settlement negotiations. With the letter of 18 February 2025, a Delegate of the Commissioner allowed the stay and the following directions were made:
1.That the opposition to 2022252800 under s59 of the Act is stayed for a period of one (1) month from 14 February 2025; and
2.The evidence in answer is due to be filed two (2) weeks after the expiry of the stay.
On 31 March 2025, the Commissioner issued a letter noting the absence of any EIA and requesting both parties to confirm that a hearing on the s59 matter was still required. On 7 April 2025, the Opponent confirmed that the matter should be set for a hearing. On 11 April 2025, the Commissioner issued a letter requesting suitable hearing dates to be provided within 4 weeks. The Applicant responded on 28 April 2025, requesting for an extension of time of 3 months for the EIA to be filed and for the Commissioner to refrain from allocating a date for the hearing of the s59 Opposition. This request was received from a new agent acting for the Applicant.
The request for an extension of time for filing the EIA was accompanied by a declaration by Grant Fisher (the new agent) dated 26 April 2025 (Fisher 1). A Delegate of the Commissioner requested further information with their letter of 23 May 2025. The Applicant’s letter of 6 June 2025 confirmed that the request for extension of time was being made under reg 5.9(2)(a). The letter was accompanied by the proposed EIA in the form of a declaration by Bill Hunter dated 5 June 2025 and a further declaration by Grant Fisher dated 6 June 2025 (Fisher 2). Subsequently, on 18 June 2025, the Delegate issued a letter indicating an intention to refuse the request for extension of time under reg 5.9(2)(a). On 25 June 2025, the Applicant requested to be heard and filed a further declaration by Grant Fisher (Fisher 3).
At the hearing, the Applicant expanded their submissions to include a request for extension of time under Regulation 5.9(2)(b) as well as 5.9(2)(a).
The law
The extension of time to file evidence during an opposition is governed by reg 5.9. Subregulation 5.9(1) gives the Commissioner the power to extend the evidentiary time periods:
The Commissioner may extend an evidentiary period mentioned in reg 5.8:
(a) if requested in writing by a party; or
(b) on the Commissioner's own initiative.The power to extend time is a discretion, as evidenced by the use of the word “may”. This power is qualified by subregulation 5.9(2), which states:
(2) The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i)has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii)despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation 5.9(5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
These provisions have previously been considered by the Commissioner[1] and it is unnecessary to repeat that analysis here. A useful summary of the requirements of reg 5.9 is as follows:
“It follows that I need to ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.”[2] (emphasis in original)
[1] See, e.g., TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57.
[2] TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 at [34]-[35].
The requirements for reasonableness, promptness and diligence were introduced in the 2013 Raising the Bar amendments to the Patents Regulations 1991[3] specifically in order to address the then problem of protracted opposition proceedings due to the Commissioner’s narrowed discretion to disallow extensions under the previous regulatory scheme. In particular, the Explanatory Statement pointed to situations where the Commissioner will not be required to give extensions of time delays due to lack of promptness and diligence; difficulties in obtaining expert evidence that could have been anticipated and acted on; or attempts to settle proceedings.[4]
[3] Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1).
[4] Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) at page 18.
It is understood that “reasonable efforts” applies to the conduct across the whole opposition, whilst “promptly and diligently” relates to the specific period for filing the evidence concerned.[5]
[5] TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 at [28].
Noting the similar wording of Trade Marks Regulation 5.15 to the Patents Regulation 5.9, the Applicant relied on the consideration of “exceptional circumstances” by Besanko J in relation to a Trade Mark matter, where Besanko J is said to have:
“(a)determined ‘that a combination of factors may constitute exceptional circumstances and, therefore, the circumstances must be considered as a whole (or in aggregate), as well as individually’ (at [45]);
(b)approved of (at [43]) Lord Bingham of Cornhill CJ’s statement concerning the meaning of this term in R v Kelly (Edward) (emphasis added):
We must construe ‘exceptional’ as an ordinary, familiar English adjective, and not as a term of art. It describes a circumstance which is such as to form an exception, which is out of the ordinary course, or unusual, or special, or uncommon. To be exceptional a circumstance need not be unique, or unprecedented, or very rare; but it cannot be one that is regularly, or routinely, or normally encountered.
(c)approved of (at [42]) Kiefel J’s decision in Hatcher v Cohn, including where her Honour said (at [50]): ‘The words “exceptional circumstances” may apply to a variety of circumstances and no definition which limits their application should be adopted, unless the limitation appears from the words of the relevant statutory provision’.”[6] (emphasis in original, citations omitted)
[6] Applicant submissions at [13].
The matters that are specified as “exceptional circumstances” in the Patents Regulations explicitly include circumstances beyond the control of a party, an error or omission by the Commissioner, an order of a court and directions by the Commissioner. Inclusive lists help clarify and expand on the ordinary meaning of a concept without limiting the full scope of the rule. Consequently, the examples of reg 5.9(5) give an indication of what is included within the scope of exceptional circumstances and out of the ordinary in the context of patent oppositions. Given that the need for an extension under reg 5.9 in and of itself indicates that the evidentiary process has not been regular, routine or normal for the party making the request, I do not consider that every deviation or exception from an ideal evidentiary period can be considered “exceptional” under reg 5.9(2)(b).
Exceptional circumstances have been said to be those that are not only outside the control of the party, but also outside the normal evidentiary process.[7] For example, in Aquatron Robotic Technology LTD v Zodiac Pool Care Europe [2016] APO 88 (Aquatron), the delegate found that delays relating to a notice to produce an article required for evidence were not exceptional circumstances, although they were taken into account when establishing promptness and diligence.[8] On the other hand, in QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 (QIP Nominees), the delegate found that a system error leading to the destruction of emails to the applicant from their agent led to an exceptional circumstance where the applicant was unaware of an opposition even being on foot up until 1 month before the due date.[9] The delegate further noted that it was unreasonable to require the applicant to prepare evidence in 1 month where 3 months is ordinarily provided for the task.[10]
[7] TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 at [64].
[8] Aquatron Robotic Technology LTD v Zodiac Pool Care Europe [2016] APO 88 at [56]-[57].
[9] QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 at [43].
[10] QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 at [43].
Extension of time request and chronology
Originally, the EIA was due to be filed by the Applicant on or before 10 March 2025. The stay of the S59 Opposition requested on 14 February was for a period of one month. The Delegate’s letter of 18 February 2025 directed that the EIA is due to be filed two weeks after the expiry of the stay. The EIA was therefore due to be filed by 28 March 2025. There was no EIA filed on 28 March 2025. A month later, following two letters from the Commissioner concerning the opposition, the Applicant requested an extension of time for a period of three months to file EIA under reg 5.9(2)(a).
The evidence provided in relation to this matter consists of declarations by Mr Fisher, the new agent engaged after the expiration of the evidentiary period. Mr Fisher’s declarations are compilations of his discussions with: Mr Crooks, the original agent; and Ms Lisa Adams, the US Representative for the Applicant.[11] The final declaration, Fisher 3, was filed with the request to be heard and was not available to the Delegate during their consideration of the matter.
[11] Fisher 3 at [5].
I will summarise the chronology of events.
Prior to the present Application being opposed on 7 June 2024, the Parent Application had undergone an opposition process. The decision for the parent opposition was appealed to the Federal Court on 24 June 2024. Following successful settlement negotiations between the parties the Parent Application was withdrawn and the appeal was discontinued on 12 September 2024. While the appeal of the opposition in the parent case to the Federal Court is not directly relevant to the present matter, it provides some context for the Applicant’s actions.
Three days before the parent appeal being discontinued, the Opponent filed the SGP on 9 September 2024. Around this time, the Applicant is said to have been “occupied with the resolution of the Appeal and the withdrawal of the [Parent] Application.”[12]
[12] Fisher 3 at [13].
Following the filing of EIS on 9 December 2024, the Applicant and their agent at the time are said to have undertaken a “thorough review” of the evidence through to early February 2025.[13] Part of the strategy arrived at was the use of a declaration from the earlier matter in relation to the Parent Application to save time.[14] Between January and early February 2025, their focus was on negotiating a settlement of the present opposition with the Opponent following the discontinuation of the appeal to the Federal Court.[15]
[13] Fisher 3 at [17].
[14] Fisher 3 at [18].
[15] Fisher 3 at [19].
As noted previously, on 14 February 2025, the Opponent, on behalf of both parties, filed a request for a stay to the proceedings for a period of one month. A Delegate of the Commissioner directed the stay as requested and allowed a period of two weeks following the conclusion of the stay for the EIA to be filed. The new deadline for the EIA was therefore 28 March 2025.
It was Mr Fisher’s understanding that Mr Crooks was involved in other matters between the dates of 10-21 February 2025 and “[Mr Crooks] believed that the IP Australia correspondence in relation to the stay had been referred to Lisa Adams by either one of his colleagues or his assistant but it is now apparent that this did not happen.”[16] Mr Fisher was further informed by Mr Crooks that “[Mr Crooks] mistakenly believed that the evidence deadline had been extended by one month ie to 10 April 2025.”[17]
[16] Fisher 3 at [20](d).
[17] Fisher 3 at [20](g).
Mr Fisher was informed that Mr Crooks believed the parties were still in negotiation discussions at the end of March 2025 but given his mistaken calculation of the stay period, “[Mr Crooks] did not consider it unusual that he did not yet have further instruction in relation to the filing of evidence”.[18] Upon receiving the Commissioner’s letter of 31 March 2025, Mr Crooks realised that the evidentiary period had already expired.[19] Mr Fisher was also informed by Ms Adams that she and the Applicant were not advised of the new evidence deadline or that an extension of time would be required if more time was needed to prepare the EIA and that the extension would be conditional.[20]
[18] Fisher 3 at [21].
[19] Fisher 3 at [22].
[20] Fisher 3 at [23].
After realising that the stay had expired and the evidentiary period with it, Mr Crooks and Ms Adams completed claim charts and analyses that would be considered for the EIA.[21] Following his appointment on 24 April 2025, Mr Fisher took steps to expedite the preparation of the EIA and worked diligently in relation to further considering the opposition grounds and evidence.[22] The declaration for the EIA was completed in six weeks.[23]
[21] Fisher 3 at [24].
[22] Fisher 3 at [24]-[27].
[23] Fisher 3 at [28].
Following is a timeline of events discussed in the provided declarations:
Date Action/event 7 March 2024 Acceptance of Application advertised 7 June 2024 Notice of opposition filed 24 June 2024 Parent decision appealed to Federal Court 23 August 2024 Parent Application withdrawn 9 September 2024 SGP filed 12 September 2024 Parent appeal to Federal Court discontinued 9 December 2024 EIS filed December 2024 – early February 2025 Applicant reviewing EIS January 2025 – early February 2025 Discussions between parties negotiating settlement 10-21 February 2025 Original agent involved in other matters 14 February 2025 Request to stay the S59 Opposition for 1 month 18 February 2025 Stay allowed 10 March 2025 EIA originally due 28 March 2025 EIA due after stay 31 March 2025 Correspondence requesting confirmation of continued relevance of the S59 Opposition issued US Representative informed that the stay had expired 7 April 2025 Opponent confirmed S59 Opposition hearing required 11 April 2025 Commissioner requested suitable hearing dates 22 April 2025 New agent contacted by US Representative Before 24 April 2025 Original agent and Applicant completed claim charts and analyses for the EIA 24 April 2025 New agent received instructions to act for the Applicant After 24 April 2025 Considered S59 Opposition grounds and EIS, preparation of EIA commenced 28 April 2025 Extension of time to file EIA requested 6 June 2025 Proposed EIA filed
The Delegate’s initial considerations
The original request for an extension of time to file evidence was made under reg 5.9(2)(a) alone.
In his letter of 23 May 2025, the Delegate raised some initial concerns regarding the request for an extension of time in regard to whether the applicant had acted promptly and diligently at all times. In particular, it was noted that the list of work provided in Fisher 1 indicated that the Applicant had not begun to prepare their EIA before the expiry of the evidentiary period.
The declarations Fisher 1 and Fisher 2 available to the Delegate explained that Ms Adams, the US Representative, and consequently the Applicant, had been unaware of the end of the expiry period until Mr Crooks, the original agent, had forwarded her the Commissioner’s letter of 31 March 2025. These declarations also detail the plans to prepare the EIA and actions completed at the time of their preparation.
The delegate was not satisfied that reg 5.9(2)(a) could be enlivened based on the evidence made available to him, which only detailed the actions of the second agent after the relevant date.
Applicant submissions
The Applicant pressed both regs 5.9(2)(a) and 5.9(2)(b) at the hearing. The Applicant further added that “There are no discretionary factors why the extension sought should not be granted.”[24]
[24] Applicant submissions at [26].
At the hearing, the Applicant focused on reg 5.9(2)(b) but noted that the same submissions were equally applicable to reg 5.9(2)(a). In particular, 3 points were made:
- Combinations of circumstances could be exceptional in their totality;
- No limitation should be read into “exceptional circumstances”; and
- “exceptional circumstances” should be given an ordinary meaning.
The Applicant submitted that the following constitutes the combination of circumstances, which in their totality are exceptional:
“First, the Patentee [sic] had determined at an early stage, and intended at all times, to brief Bill Hunter as its expert and to use the July 2023 Hunter Declaration as the base for his evidence, given the substantial overlap in issues between the 733 proceeding and the present proceeding. This is not a case where the Patentee [sic] delayed turning its mind, until a late stage, to the kind of evidence it would lead. Second, the parties were negotiating prior to the evidence deadline. Third, the parties quite properly approached the Commissioner for a stay which was granted. Fourth, it should be inferred that the extension to the evidence deadline granted – two weeks, from 14 to 28 March 2025 – was less than the parties had implicitly sought the Commissioner grant. It is apparent the parties desired a one month stay to the deadline. Fifth, the Patentee [sic], because of failures by POF, was left in the dark about whether the proceeding remained stayed (presumably proceeding on the basis that the desired one month stay was in place), when the new evidence deadline was, and the risks with not preparing its evidence while the proceeding was stayed.”[25] (italics in original)
[25] Applicant submissions at [16].
The Applicant noted that, within the totality, problems began when the request for the stay in proceedings was allowed. It is their submission that the parties had intended for an extension of one month to the EIA deadline (that is, to 10 April 2025) to be the outcome of the request. When the original Australian agent failed to pass on the Delegate’s letter of 18 February 2025, the Applicant was left in the dark about the new evidence deadline being earlier than they had expected.
The Applicant referred to QIP Nominees as a useful example where an extension of time under reg 5.9(2)(b) was granted despite there being actions that could have been taken to avoid missing the deadline. According to the Applicant, “[t]here is no material difference between the circumstances of that case and this case, where the Patentee [sic] was left in the dark about the duration of the stay and the new evidence deadline until the deadline passed.”[26]
[26] Applicant submissions at [22].
As for reg 5.9(2)(a), the Applicant submitted as follows:
“Having regard to the facts relied on in paragraphs 16 and 17 above, the Commissioner should also be satisfied that reg 5.2(a) [sic] is met. The evidence demonstrates that the Patentee [sic] made all reasonable efforts to comply with all relevant filing requirements, and despite acting promptly and diligently at all times to ensure the appropriate evidence was filed within the permitted period, was unable to do so.”[27]
[27] Applicant submissions at [25].
At the hearing, I also asked whether there were any particular points for me to consider specifically in relation to exercising my discretion to allow the extension, if I was satisfied that the requirements of reg 5.9(2)(a) and/or reg 5.9(2)(b) were met. To this, the Applicant replied that the declaration of Bill Hunter was already filed with the office in June and there would be no prejudice to the Opponent.
Considerations
Following the Applicant’s lead, I will address the extension under reg 5.9(2)(b) first.
At the outset, I agree with the Applicant’s first proposition that combinations of circumstances could be exceptional in their totality. However, I disagree with the subsequent two propositions that no limitation should be read into “exceptional circumstances” and that it should be given an ordinary meaning. I have explained this above with the relevant law.
In Aquatron, a Delegate observed that “While request for a Notice to Produce may not often be sought from the Commissioner, this does not mean that such a request is to be regarded as exceptional circumstance for the purposes of filing evidence.”[28] The delays to the preparation of the evidence stemming from the request for a notice to produce, and the applicant’s handling of the situation, were considered relevant under reg 5.9(2)(a) but not under reg 5.9(2)(b).
[28] Aquatron Robotic Technology LTD v Zodiac Pool Care Europe [2016] APO 88 at [56].
Analogously, in the present case, there were settlement negotiations during the period between the filing of the EIS and the EIA and a request for a stay was made. The requested stay was allowed by a Delegate of the Commissioner. A direction by the Commissioner that an opposition be stayed pending the completion of a related action is one of the expressly listed “exceptional circumstances” under reg 5.9(5). In recognition of this, the Delegate’s letter of 18 February 2025 also gave a 2-week extension to file the EIA after the expiration of the stay.
In QIP Nominees, an extension to file evidence in answer was granted when an applicant was not aware of an opposition being filed against the acceptance of their application until one month before their evidence was due.[29] Their agent had duly sent the notice of opposition, statement of grounds and particulars and evidence in support to the applicant via email but newly implemented security measures in the applicant’s email system had wrongly identified these documents as cyber-attack threats and destroyed them.[30] The Delegate concluded that it would be unreasonable to expect the applicant to complete their evidence in the time left when the prescribed period is 3 months.[31]
[29] QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 at [43].
[30] QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 at [38]-[41].
[31] QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 at [43].
To my mind, there is an important distinction between QIP Nominees and the present case. In QIP Nominees, the applicant was unaware of the fact that there was an opposition to their application. If an applicant is not aware of there being an opposition to their application, it is unreasonable to expect them to be preparing evidence.
In contrast, in the present case, the Applicant knew they were in opposition. The Applicant had received the notice of opposition, SGP and EIS for the present application. The Applicant also knew their EIA was due on 10 March 2025. Having expected the settlement negotiations with the Opponent to continue past the EIA due date, a 1-month stay was requested on 14 February 2025. Such a request does not reflect the actions of parties who were unaware of the evidentiary process.
At the hearing, I asked about this distinction. The Applicant responded that the applicants in QIP Nominees had demonstrated just as much lack of attention as they had and there could be no distinction. The Applicant went on to submit that where the Delegate in QIP Nominees intentionally overlooked what could have been done in hindsight, they were in a similar position where various people involved could have checked dates and communications but did not. The Applicant further submitted that the applicant in QIP Nominees was in fact less attentive than themselves as the applicant in that case should have confirmed grant of their application rather than assuming no news was good news.
However, the routine course of events after acceptance is grant and patentees generally have little to action on patents after acceptance. When opposition to the grant of their application is filed, applicants have a significant number of key activities to action. Where the Applicant knew their original EIA deadline, ignoring this significant milestone is not reasonable.
The Applicant submitted that their agent had failed to advise them of the duration of the stay, the new evidence deadline and where the proceeding was up to.[32] This presents one major hurdle in my mind. If the Applicant did not know of the duration of the stay or the new evidence deadline, then they also could not have been aware of the stay having been given. The Delegate allowed the stay in the same letter that directed its duration and extension of time to file the EIA. Consequently, if it was unreasonable for the Applicant to work towards the new deadline, albeit shorter than assumed, it was also unreasonable for the Applicant to assume a stay had been allowed at all. However, the Applicant made no effort to have the EIA ready on 10 March 2025, 28 March 2025 or even 10 April 2025.
[32] Applicant submissions at [23].
Engaging with the opposition process and formulating a strategy for preparing evidence at an early stage of the proceedings was commendable. There was clearly a communication breakdown between the Applicant and their agent during the evidentiary period when the Applicant should have been preparing their EIA. However, the factors flagged by the Applicant[33], individually or in their totality, do not amount to exceptional circumstances. While the evidentiary period did not go smoothly and included elements not encountered in every case, none of the events nor their totality amount to circumstances where it would have been unreasonable to insist on the Applicant filing their EIA on time or at least by the later due date.
[33] Applicant submissions at [16].
I can accept that there was an exceptional circumstance during the evidentiary period, that being the direction of a stay. Due to this exceptional circumstance, as recognised in the Regulations, the Delegate’s letter of 18 February 2025 allowed an extension of time of 2 weeks after the expiry of the stay for the EIA to be filed. However, based on the evidence in front of me, it is not apparent that this was causal of the failure to file the evidence in answer by the extended due date.
Moreover, I am not satisfied that there were further exceptional circumstances that warrant extending the time to file the EIA again. I am not satisfied that any of the matters identified by the Applicant represent exceptional circumstances. Nor does the totality of these matters represent an exceptional circumstance. An extension under reg 5.9(2)(b) is therefore not enlivened.
Turning now to the consideration under reg 5.9(2)(a), despite having formulated a strategy early, the Applicant had not actually begun preparing the EIA when the stay and the associated extension expired.
Based on the declarations provided, the Applicant had undertaken “a thorough review of the evidence in support”[34] during the period of December 2024 to early February 2025, further analyses and claim charts were drawn up in April 2025 with the original agent,[35] then the S59 Opposition grounds and EIS were considered again with the new agent before the preparation of the EIA actually commenced.[36] According to the new agent, “Having undertaken an initial review, I expect that the Opponent [sic] will require a significant period of time to complete its evidence in answer.”[37] After listing a series of tasks to be carried out in preparing the EIA, the new agent initially estimated that 3 months would be required for the exercise.[38]
[34] Fisher 3 at [17].
[35] Fisher 3 at [26].
[36] Fisher 3 at [27].
[37] Fisher 2 at [7].
[38] Fisher 1 at [9].
The prescribed period for evidence in answer is 3 months. The estimated requirement of 3 additional months suggests to me that little to no work towards the finalisation of the EIA had actually been carried out. I accept that Mr Crooks failed to pass on the Delegate’s letter of 18 February 2025 to the Applicant or to their US Representative. However, if that was the case, a reasonable and diligent applicant should have been working towards preparing their EIA as originally scheduled, or at least with a view to their estimated new deadline. Similarly, a reasonable and diligent applicant would have engaged their expert well before the evidence is due, so as to be prompt with their filing obligations.
The Applicant stressed that Mr Crooks had failed not only in passing on the Delegate’s letter of 18 February 2025 but also failed to inform them of the risks associated with not preparing the EIA while the proceeding was stayed.[39] During the hearing, I asked whether this meant that there was an expectation that the evidentiary period would continue to be pushed back until the Applicant was ready. The Applicant responded instead that they were engaged with the evidentiary process but due to their agent’s failure, they did not know what was to happen next or when.
[39] Applicant submissions at [16]; Fisher 3 at [23].
I am not satisfied that the Applicant acted reasonably where they failed to work towards any deadline at all. Even if the stay had been given to 10 April 2025 as predicted by the Applicant, according to the declarations, the Applicant was still drawing up claims charts and analysing the EIS at this time. They did not act reasonably by not progressing the evidence with a view to their predicted new deadline for the EIA. Despite the expeditious efforts made by the new agent after the fact, I am not satisfied that the Applicant acted promptly or diligently during the actual evidentiary period. An extension under reg 5.9(2)(a) is therefore not enlivened.
It follows that I cannot extend the time for filing the EIA under reg 5.9(2)(b) or reg 5.9(2)(a).
The Commissioner only has discretion under reg 5.9(2) when he is satisfied that the party has made all reasonable efforts to comply with the filing requirements and they have acted promptly and diligently at all times or there were exceptional circumstances. I am not so satisfied and I therefore have no discretion to allow an extension of time.
Conclusion
I refuse the extension of time.
The declaration by Bill Hunter dated 5 June 2025 and annexures thereto that was filed on 6 June 2025 does not form part of the EIA. The Applicant may make a request under reg 5.23 for the Commissioner to consult the declaration for the purposes of the S59 Opposition. However, that is a separate consideration.
M. Umehara
Delegate of the Commissioner of Patents
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