IP Reform - patent oppositions

5 Apr 2013

The information below has been developed to help you to understand the changes and how they may affect the way you do business with us. These changes will come into operation for oppositions commenced on or after 15 April 2013, and in part for oppositions commenced before 15 April 2013.

Key changes

• The periods for commencing oppositions have been altered.
• Parties will file documents with the Commissioner rather than serve them on the other party. The Commissioner will then give a copy to the other party.
• The Statement of Grounds and Particulars must be accompanied by a copy of documents mentioned in the statement.
• Procedural oppositions will be managed by directions.
• Extensions of time to file evidence will be considered against a more stringent test.
• Further evidence is no longer available.

How do I commence an opposition?

In all cases, a Notice of Opposition must be filed with the Commissioner, and the Commissioner will give a copy of the notice to the other party. The time for filing the notice depends on the type of opposition.

The new Regulations refer to 'substantive opposition' and 'procedural opposition'.  What is the difference?

Substantive oppositions are those under sec 59, 75 and 101M.  The regulations lay down time frames for evidence in these oppositions.

Procedural oppositions are those under sec 104 and 223, and reg 22.21.  The Commissioner will set time frames for evidence in these oppositions.

What is the time period for commencing an opposition?

For oppositions commenced on or after 15 April 2013:

Type of opposition	Time for filing a notice of opposition
Opposition to the grant of a patent (sec 59)	3 months from the publication of the acceptance of the application
Opposition to an innovation patent (sec 101M)	Any time after certification
Opposition to an extension of term (sec 75)	3 months from the publication of the acceptance of the extension
Opposition to an amendment (sec 104)	2 months from the publication of the Grant of Leave to Amend *
Opposition to an extension of time (sec 223)	2 months from the publication of the extension
Opposition to the grant of a licence (reg 22.21)	2 months from being given a copy of the request for a licence

* In the case of an opposition under section 104, the opposition period will remain 3 months if the amendment was advertised before 15 April 2013, and the notice of opposition is filed on or after 15 April 2013.

What do I include in my Statement of Grounds and Particulars?

The Statement lists the grounds of the opposition and all relevant particulars for each ground. 

For substantive oppositions under sec 59 or 75, a Statement of Grounds and Particulars must be filed with the Commissioner within 3 months of the day that the Notice of Opposition was filed.  In the case of procedural oppositions, the Statement of Grounds and Particulars must be filed within 1 month of the day that the Notice of Opposition was filed.

A copy of each document mentioned in the statement must be attached (unless it is an AU or WO specification that is open to public inspection, or is a document that is already on the file of another AU application).  All documents mentioned in the statement are to be listed in the Schedule to the Statement, along with an indication of whether a copy of the document has been provided or that the document is open to public inspection.

In the case of an opposition to an innovation patent under sec 101M, the statement is filed together with the Notice of Opposition.  Copies of documents do not have to be provided if they are part of the evidence filed at the same time.

Note:  For oppositions commenced before 15 April 2013, the statement must be filed within 3 months of the date of filing the Notice of Opposition (except in the case of an opposition to an innovation patent), and copies of documents mentioned in the statement do not have to be attached to the statement.

What are the grounds of opposition to the grant of a patent?

Sec 59 sets out the grounds of opposition to the grant of a patent. 

For applications where the Request for Examination was filed before 15 April 2013, the grounds of opposition have not changed.

For applications where the Request for Examination was filed on or after 15 April 2013, the grounds of opposition reflect the grounds of examination.  Consequently, the new sec 40(2)(a) and 40(3) apply in place of the former provisions.  Also, the ground of utility will include the definition in sec 7A.

What happens if I do not include copies of documents when I file my Statement of Grounds and Particulars?

The Commissioner can dismiss an opposition if copies of the documents are not provided.

Can I ask for the opposition to be dismissed?

Yes.  The applicant can ask for dismissal of a substantive or procedural opposition within 1 month of receiving the Statement of Grounds and Particulars. The opposition can be dismissed if there are no reasonable prospects of success.

Can I extend the time for filing the Notice of Opposition or the Statement of Grounds and Particulars?

Yes.  These periods can be extended under sec 223.  However, an extension will only be allowed if an appropriate case is made.

Am I required to serve evidence on the other party, or do I file it with the Commissioner?

As of 15 April 2013 you are required to file all evidence with the Commissioner.  The Commissioner will then give a copy to the other party. 

What is the start (and end) date for evidence periods?

Evidence is normally filed in three stages:  evidence in support, evidence in answer, and evidence in reply.  Each stage has an evidence period.  The start and end dates for the evidence periods depend on when the opposition was commenced and when the evidence period commenced.

1.  For oppositions that commenced before 15 April 2013, the evidence periods are set by the regulations in force immediately before 15 April 2013.  However, these are modified by the transitional provisions.

• Where the evidence period has commenced but not been completed before 15 April 2013 then:
• Evidence in support must be filed within 3 months of the day the opponent served the Statement of Grounds and Particulars (except for oppositions under sec 101M, where the evidence in support was served at the same time as the Notice of Opposition).
• Evidence in answer must be filed within 3 months of the day that the evidence in support was served.
• Evidence in reply must be filed within 1 month of the day that the evidence in answer was served, or within 3 months of the service of evidence in answer if a notice of intention was filed within 1 month.
• Where the evidence period commenced on or after 15 April 2013 then:
• Evidence in support must be filed within 3 months of the day the opponent filed the Statement of Grounds and Particulars (except for oppositions under sec 101M, where the evidence in support was served at the same time as the Notice of Opposition).
• Evidence in answer must be filed within 3 months of the day that the evidence in support was filed.
• Evidence in reply must be filed within 1 month of the day that the evidence in answer was filed, or within 3 months of the filing of evidence in answer if a Notice of Intention was filed within 1 month.

IMPORTANT NOTE:  The evidence periods commence on the day of filing the last piece of evidence in the previous evidence stage (except in the case of evidence in support).  If the evidence was not given to the other party on that same day, the evidence period is automatically extended by the number of days between when the evidence was filed and when it was given to the other party.

Extensions of the time for filing evidence are considered below.

2.  For substantive oppositions that commence on or after 15 April 2013, the regulations provide that:

• Evidence in support -  must be filed within 3 months of the day the opponent files the Statement of Grounds and Particulars (except for oppositions under sec 101M, where the evidence in support is filed at the same time as the Notice of Opposition).
• Evidence in answer -  must be filed within 3 months of the day that the Commissioner
• gives the final piece of evidence in support to the applicant, and
• notifies the applicant that evidence in support is complete.
• Evidence in reply -  must be filed within 2 months of the day that the Commissioner
• gives the final piece of evidence in answer to the opponent, and
• notifies the opponent that evidence in answer is complete.
• Extensions of the time for filing evidence are considered below.

3.  For procedural oppositions that commence on or after 15 April 2013, the regulations do not specify evidence periods.  If the Commissioner is satisfied that evidence is required, she will give directions setting the periods for evidence.

Can I extend the time for filing evidence in a substantive opposition?

Yes.  However, the law that applies depends on when the evidence period commenced.

• Evidence periods that commenced before 15 April 2013
• These periods can be extended under the regulations that applied immediately before 15 April 2013. 
• Evidence periods that commenced on or after 15 April 2013
• These periods can be extended under the regulations that commenced on 15 April 2013.  That is, the more stringent requirements for extensions apply.

Can I extend the time for filing evidence in a procedural opposition?

Yes.  However, the law that applies depends on when the opposition commenced.

• Oppositions commenced before 15 April 2013
• The evidence periods are set by the regulations that applied immediately before 15 April 2013.  These periods can be extended under the regulations that applied immediately before 15 April 2013 (i.e. the former reg 5.10).
• Oppositions commenced on or after 15 April 2013
• The evidence periods are set by the Commissioner by direction and can be varied by direction. 

What is the procedure for filing evidence in reply?

For substantive oppositions commenced on or after 15 April 2013, the opponent can file evidence in reply within 2 months of the day the Commissioner gives the evidence in answer to the opponent and notifies them the evidence in answer has been filed.

For procedural oppositions commenced on or after 15 April 2013, the procedure for filing evidence in reply is set by direction.

For oppositions commenced before 15 April 2013, the opponent can, within 1 month of the filing of evidence in answer either:

• file evidence in reply 
• file a notice of intention to file evidence in reply (and then file that evidence within 3 months of completion of the evidence in answer).

Can I file further evidence?

For oppositions commenced before 15 April 2013, a party can ask to file further evidence.  This request will be considered according to the regulations in force immediately before 15 April 2013.

For oppositions commenced on or after 15 April 2013, there is no facility for filing further evidence.

What happens if some of my evidence is confidential?

You can ask the Commissioner to direct that the particular document is not open to public inspection (under reg 4.3(2)(b)).  The Commissioner will only do this if there are reasonable grounds for believing the document should not be open to public inspection. Parties should not assume that this will automatically be approved. 

From 15 April 2013, the Commissioner will be able to make this direction in relation to a document filed before, on or after 15 April 2013.

Do I have to provide a summary of submissions before the hearing?

If a Notice of Hearing issues on or after 15 April 2013, then a summary of submissions is required.

• In a substantive opposition, the opponent must file their summary of submissions at least 10 days before the hearing, and the applicant must file their submissions at least 5 days before the hearing.
• In a procedural opposition, the Commissioner will advise the parties when their summaries of submissions are required.

Can I withdraw the opposition?

Yes.  The opponent can withdraw the opposition by filing a signed Notice of Withdrawal. 

How will the hearing be conducted?

When the evidence is complete, the Commissioner will determine whether the hearing should be conducted orally or by written submissions.

If the hearing is to be held orally, you can either:

• attend the hearing in person (with or without a lawyer)
• attend the hearing by telephone or video link (with or without a lawyer)
• file written submissions for consideration
• make no appearance.

If you attend in person or by telephone or video, the parties will be invited to present their submissions in turn.

You should contact the Patent Oppositions Team to discuss your preference for attendance at the hearing.

Are there approved forms for me to use?

Yes.  Approved forms are available on our website.

Are there any fees that I need to pay?

Yes.  The major actions that require a fee are:

• Filing a Notice of Opposition
• Filing a Request for Dismissal
• Filing a Request to Extend Time
• Making a representation to Amend a Notice of Opposition or Statement of Grounds and Particulars
• Objecting to an Amendment to a Notice of Opposition or Statement of Grounds and Particulars
• Making a representation objecting to a proposed direction
• Filing a Request for a Hearing
• Hearing on the basis of written submissions 
• Appearing at an oral hearing

The full list of fees is provided in Schedule 7 of the Patents Regulations

What should I do if I need further help with an opposition matter?

As oppositions can be extremely complex, it is recommended that you consider seeking independent legal advice that is appropriate to your situation.

We can provide general assistance in relation to procedures, time frames, forms and fees. You can contact the Patent Oppositions Team directly on (02) 6283 2752.

Last Updated: 05/4/2013

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Assistant Director - International Policy & Cooperation
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