Patents Office takes strict line on extensions of time

Ireland

The Irish Patents Office has issued guidelines on how it proposes to deal with applications for extensions of time in trademark matters from May 4 2010 onwards. These are the first formal guidelines issued by the office on any procedural matter.

Previously, the office would often grant three or four extensions of time of three months each on a prosecution or opposition matter before a final deadline was set. Under the new guidelines, the initial period of three months to respond to an objection to an application or to file evidence in opposition, revocation or invalidity cases is unaffected. The party facing the deadline will be entitled to a first extension of time for a period not exceeding three months. The guidelines do not specify any particular evidence or circumstances which are necessary for the first extension of time, so it may be available as of right.

If that party requires a second extension of time, evidence of unusual or exceptional circumstances will be needed. Details must be supplied of:

  • the time sought;
  • why this is needed;
  • what has been done and what needs to be done; and
  • why it was not possible to do this in the time elapsed.

Any relevant evidence should be provided of correspondence with clients or third parties, ongoing negotiations or outside factors awaiting completion such as court cases or decisions of international bodies. A second extension can be granted for “an appropriate period” which could exceed three months.

An application for a third extension of time will be considered only if evidence can be supplied which is different from the evidence for the second extension or which demonstrates that further genuine progress has been made. The third extension can also be for an appropriate duration, but it will be deemed to be a final extension. When a final extension is granted, no further applications for extensions of time will be considered other than in exceptional circumstances and at the discretion of the head of the office.

The guidelines also provide a non-exhaustive list of circumstances in which an extension may be granted:

  • The party seeking the extension is awaiting the outcome of negotiations;
  • Court cases relevant to the issue are pending and have not been concluded;
  • The party seeking the extension is awaiting the decision of an international body, for example the Office for Harmonization in the Internal Market or the World Intellectual Property Organization;
  • Other relevant proceedings are pending - for example, the earlier rights could be pending applications which have not yet reached a conclusion, or registrations which are the subject of revocation or invalidity proceedings, or in the process of surrender;
  • There are circumstances beyond the reasonable control of the applicant; and
  • Significant progress has been made, but a specific period of additional time is required to complete the work.

These new guidelines will require opponents, invalidity applicants and proprietors defending revocation actions to gather the evidence to be included in their statutory declarations as quickly as possible. This will require prompt action, because evidence-gathering can take some time, especially where several geographical locations or obsolete accounting or recordal systems are involved, or where the evidence is in storage. Where evidence of a reputation in the European Union is involved, the process could be particularly lengthy.

Where proceedings are delayed because the earlier mark is an application or registration which is under challenge, the delay can take some years. It is hoped that the office will take a pragmatic view to such situations and consider them to be exceptions to the guidelines, or apply the guidelines flexibly. In any event, the office operates under the general principles of Irish law, which include the right to fair procedures. The guidelines will thus have to be interpreted in that light.

The guidelines have no transitional provisions and do not state whether they apply to matters which are pending when the guidelines come into effect. Again, it is hoped that the office will take a pragmatic approach so as not to apply the guidelines retroactively with an inequitable result.

Niamh Hall, FRKelly, Dublin and Belfast

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