FOR IP PROFESSIONALS

Hearings and appeals

Within three months of filing a Notice of Opposition PDF [430KB] to a standard patent application, you must serve a copy of the Statement of Grounds of Opposition PDF [428] on the applicant.

In the case of an innovation patent you must serve a copy of the Statement of Grounds of Opposition on the patentee within seven days of filing the notice of opposition.

The original of the Statement of Grounds of Opposition must be filed with us as soon as possible.

'Grounds' refer to the criteria in the Patents Act 1990 under which relevant actions can be opposed.

'Particulars' is a description of the material facts that support your grounds for the case, but not the evidence itself.

The Particulars must have enough detail to allow the patent applicant or patentee to understand the case they have to answer and should list any documents, circumstances and general knowledge you are relying on to oppose the patent or patent application.

The process of submitting evidence in a patent opposition

After serving the Statement of Grounds and Particulars, the opposition process goes through several stages of giving evidence and it is essential that you meet the time limits on the serving of evidence.

The stages are:

evidence in support - the opponent has three months to send a copy of the evidence in support of their opposition to the applicant/patentee
evidence in answer - the applicant/patentee has three months to send a copy of their evidence in answer to the opponent
evidence in reply - the opponent has three months to send to the applicant/patentee a copy of their evidence in reply to the evidence in answer

The process of hearing a patent opposition

When the evidence stages have ended a hearing will be scheduled for a delegate of the Commissioner of Patents to decide the matter.

While the hearings are informal, each party is given an opportunity to argue their case by reference to the law and evidence, and argue against the case of the other party.

Each party may present their case in person, by telephone, by a video conference link or by written submissions. It is usual, but not necessary, for each party to be represented by a patent attorney or other legal person. Both parties are required to provide a written summary of their submissions to assist the hearing officer. These summaries should be supplied before the hearing starts.

It should be noted that neither written nor verbal submissions are a substitute for the evidence on file before the hearing officer.

The hearing officer will usually not decide the outcome of the opposition at the hearing. The decision will be made after careful consideration of both the submissions and the evidence received.

The outcome of an opposition hearing

The delegate will send a notice of the decision and a statement of reasons to both parties within three months of the hearing.

This will also include a decision on any application for an award of costs.

Copies of all IP Australia decisions since 1983 are available on the Australasian Legal Information Institute website.

If the opposition is successful, the patent applicant or patentee is usually given an opportunity to amend their patent specification to overcome the problems identified in the Commissioner's decision.

Appeals

If either party disagrees with the Commissioner's decision they can file an appeal (depending on the nature of the decision) to the Federal Court of Australia.