IP Regulations - schedule 3
On this page:
- Filing of evidence in Oppositions
- Extensions of time to file evidence
- Filing of evidence in Oppositions - confidentiality between parties
- Fee for Trade Marks Notice of Intention to Defend (NID)
- Dismissing a trade mark opposition for inadequate Statement of Grounds and Particulars (SGP)
- Documents sent by IP Australia presumed to have been given to a person 'unless the contrary intention appears'
- Adding grounds to the Statement of Grounds and Particulars
- Awards for costs for oppositions
- Other issues
Filing of evidence in Oppositions
Part 1 Item [1] - Patents regulations 5.3 and 5.7
Part 2 Items [8] and others - Trade Marks regulations 2.3, 5.4, 5.15 and others.
The draft regulations streamline patent and trade marks opposition proceedings. Parties will no longer need to serve documents and evidence on the other party. They will only need to file the documents and evidence with IP Australia. IP Australia will then give the other party the evidence. We will also advise them when any future statutory time periods commence for them to file documents and evidence to support their claims. This will reduce disputes about meeting statutory time periods. IP Australia, rather than the individual parties, would oversee compliance with the beginning and ending of the time period.
Stakeholders raised concerns that parties would be disadvantaged by delays if IP Australia sends evidence via the postal system. Another concern was that the onus might shift to the parties to chase up each other’s evidence, as IP Australia might not know if they had received the evidence.
Outcome
IP Australia will wherever possible direct and use electronic means for the filing and giving of evidence and documents. This will be a temporary measure until e-Dossier capability is available. This will not require a change to the draft regulations.
IP Australia will issue guidelines about the use of electronic means for this purpose prior to commencement of the new process.
Extensions of time to file evidence
Part 1 Item [1] - Patents regulation 5.9
Part 2 Item [9] and others - Trade Marks regulations 5.16 and others
A major cause of protracted opposition proceedings are the extensions to the various time periods for providing evidence. The law as it stands significantly narrows the discretion of the Commissioner or Registrar to disallow extensions.
The regulations will introduce a more rigorous test to get an extension of time to file evidence. Apart for exceptional circumstances, the filing party must act promptly and diligently at all times during the opposition period. They must also make all reasonable efforts to comply with relevant time periods.
Some stakeholders thought the test was too strict, particularly for smaller attorney firms. Other submissions noted that the changes would apply to oppositions already in progress. This may benefit a party that prepared evidence under the existing provisions. One suggestion was to provide one automatic extension as a provisional measure.
Outcome
The regulations will retain the proposed wording of the extension of the time test. This is an important measure to ensure the swift conduct of proceedings in the public interest. If the test were relaxed, there would be scope for parties to continue to drag out opposition proceeding to the detriment of the other party and the public.
Filing of evidence in Oppositions - confidentiality between parties
Part 1 Item [1] - Patents regulation 5.7, 5.8
Part 2 Item [9] and others - Trade Marks regulations 5.15 and others
Sometimes, confidential evidence is supplied in opposition cases. Some stakeholders said that currently, parties arrange confidentiality agreements with each other before serving confidential evidence. These stakeholders queried how confidentiality would be imposed on other parties when IP Australia gives the evidence to the other party.
Outcome
Parties will continue to be responsible for arranging any confidentiality agreements with the other party before filing evidence. IP Australia will not have any role in imposing confidentiality agreements agreed privately between the parties.
Regardless of any agreement between the parties, legislation dictates whether filed evidence is published or not. The Commissioner or Registrar will continue to apply the relevant Act or Regulations to determine if the filed evidence should be published.
Fee for Trade Marks Notice of Intention to Defend (NID)
Part 2 Item [9] - Trade Marks regulation 5.14
Sometimes trade mark applicants do not defend their applications after a notice of opposition has been filed. This may be for a number of reasons, including: the opponent’s case has persuaded them; or they no longer wish to pursue registration due to changing business circumstances. However, where this occurs it may take a number of months for the matter to be finalised and the opponent must still go to some time and expense in preparing their case. Under the proposed regulations, when a third party opposes a trade mark, the applicant will have one month to declare their intention to defend the matter.
Some stakeholders thought the NID should be accompanied by a refundable fee (for example $100) so that the process was not trivialised. Others felt the imposition of a fee would be unfair to applicants, particularly small businesses who have already paid to have their application examined and accepted.
Outcome
Lodging a NID will not attract a fee for applicants at this stage. Applying a fee could disadvantage applicants in imposing a cost to defend even a clearly unmeritorious opposition. Over time, IP Australia will monitor whether the new NID requirements lead to a reduction in the current level of inefficiencies for opponents.
Patent oppositions - cooling off period similar to trade marks
Part 2 Item [9] - Trade Marks regulation 5.17
The trade mark regulations introduce a 'cooling off' period for opposing parties to stop the clock and negotiate an agreement during opposition proceedings. This may help people save time and money gathering evidence for formal proceedings.
Some stakeholders wanted a similar cooling off period introduced for patents oppositions. However, others noted that patents are quite different to trade marks. There should be consideration of the public interest in understanding where people are free to operate in a field of technology.
Outcome
IP Australia does not intend to introduce a cooling off period for patents. Unlike a trade mark, it may be more difficult for a third party to ‘work around’ an invention. Accordingly, it is not in the public interest to allow parties to agree to delay the resolution of a patent opposition through a cooling off period.
Dismissing a trade mark opposition for inadequate Statement of Grounds and Particulars (SGP)
Part 2 Item [9] - Trade Marks regulation 5.9
Under the draft regulations, a third party must indicate why they are opposing a trade mark with a statement of grounds and particulars.
Stakeholders noted that the regulations appeared to provide the Registrar with powers to dismiss an opposition if only one ground was not adequately particularised - even when other grounds were adequately detailed. Other stakeholders suggested that the Registrar should ask for further and better particulars before a final decision to dismiss an opposition.
Outcome
Amendments to the regulations will permit the Registrar to dismiss an opposition only in relation to the inadequately particularised grounds.
The regulations will not require the Registrar to always request further and better particulars before proceeding to dismissal. The requirements to particularise a ground will not be onerous. IP Australia considers it desirable that opponents make genuine efforts to adequately particularise the grounds in the first instance. Where the opponent has made a genuine (but inadequate) attempt to particularise the grounds, it is highly unlikely that the Registrar would proceed straight to dismissal. The Registrar would likely request further and better particulars first.
However, if it was mandatory for the Registrar to ask for further and better particulars, the system would be open to abuse. For example, opponents may deliberately omit the particulars to gain more time while the Registrar requests further and better particulars. The current draft ensures that the Registrar has the option of moving straight to dismissal when the opponent has clearly not made a genuine effort to particularise the grounds.
Documents sent by IP Australia presumed to have been given to a person 'unless the contrary intention appears'.
Patents Regulations 1991 – Patents regulation 1.3A
Part 2 Item [8] – Trade Marks regulation 2.3
Under these provisions, a document given by the Commissioner or Registrar is deemed to have been received on the date it was given, ‘unless the contrary intention appears’. Some stakeholders considered this term did not make sense. They considered that it is difficult to know the intention.
Outcome
Subject to drafting advice, IP Australia proposes to amend the regulations to make it clear that the documents will be taken to have been given to the person on the day the Commissioner or Registrar dates it. This will be the case unless the contrary is proved. The language will be consistent across all rights.
Adding grounds to the Statement of Grounds and Particulars
Part 2 Item [9] – Trade Marks regulation 5.13(3)(b)
Opponents are required to detail the nature of their opposition in the statement of grounds and particulars. If they want to amend or add a ground at a later date, they can only do so if they ‘could not have been reasonably aware’ at the time of filing their statement of grounds and particulars.
Some stakeholders suggested that the wording ‘could not have been reasonably aware’ was overly restrictive. They preferred the words ‘were not reasonably aware’.
Outcome
IP Australia does not propose changing the draft regulations. Changing the test may introduce a degree of subjectivity into the test. The test should remain objective and should continue to put the onus on opponents to disclose the nature of their opposition at an early stage.
Awards for costs for oppositions
Patents Regulations 1991 – schedule 8
Part 2 Item [20] – Trade Marks schedule 8, Part 1
When an opposition to a patent or trade mark is successful, the Commissioner of Patents or the Registrar of Trade Marks can award costs. Several stakeholders commented that the schedule of costs were too low. In their view, the scheduled costs did not reflect the true cost and did nothing to thwart frivolous oppositions or defences.
Outcome
IP Australia does not propose to change the scheduled costs at this stage but will note this for future consideration.
Other issues
Stakeholders raised a number of other issues during consultation. IP Australia proposes making some editorial changes and technical corrections to schedule 3 of the draft regulations.
A common concern amongst stakeholders was how IP Australia will implement the provisions. This concern was in particular to opposition proceedings for trade marks. IP Australia will consider these concerns as part of the process to revise the explanatory material that accompanies the regulations. They will also be considered in the development of practice guidelines and manuals.
Last Updated: 18/1/2013
