FOR IP PROFESSIONALS

Hearings and appeals

If you want to oppose a patent or patent application, you must file a Notice of Opposition PDF and a Statement of Grounds and Particulars PDF.

'Grounds' refers to the criteria in the Patents Act 1990 that you intend to rely on to establish the opposition.

'Particulars' are the facts and circumstances that form the basis for the grounds.

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.

Before you file the notice, statement and evidence, you should contact us to speak to our Patent Opposition, Hearings and Legislation Section for information on the filing process. The requirements for filing the notice of opposition and the statement of grounds and particulars depend upon the type of opposition:

1. Opposition to the grant of a standard patent

Within 3 months of filing a notice of opposition, you must file a statement of grounds and particulars. The statement must list every document that you are relying on to oppose the grant of the patent.  A copy of each document must be filed with the statement, or you must indicate that the document is open for public inspection at IP Australia.

2. Opposition to an innovation patent

The notice of opposition and statement of grounds and particulars must be filed at the same time, together with any evidence that you intend to rely on to support your case. The statement must list every document that you are relying on to oppose the patent. A copy of each document must be filed with the statement, or you must indicate that the document is open for public inspection at IP Australia or has been filed as part of the evidence.

The process of submitting evidence in a patent opposition

After filing the statement of grounds and particulars, the opposition process goes through several stages of filing evidence. The evidence must be filed by a means approved by the Commissioner of Patents and there are certain time limits that must be met. 

1. Opposition to the grant of a standard patent

The stages are:

  • evidence in support, where the opponent files evidence in support of their opposition. 
  • evidence in answer, where the applicant files their evidence in answer to the opposition.
  • evidence in reply, where the opponent files their evidence in reply to the evidence in answer.

2. Opposition to innovation patent

The stages are:

  • evidence in answer, where the patentee files their evidence in answer to the opposition.
  • evidence in reply, where the opponent files their evidence in reply to the evidence in answer.

The time limit for filing evidence for each stage is 3 months.

The process of hearing a patent opposition

When the evidence stages have ended, a hearing will be scheduled for a delegate of the Commissioner to decide the matter. The Commissioner will determine whether the hearing will be held orally or by written submissions.

Where the hearing is held orally, each party is required to provide a written summary of their submissions to assist the hearing officer prior to the hearing.  The opponent must file their summary of submissions at least 10 days prior to the hearing, and applicant at least 5 days before the hearing. During the hearing the parties may present their case in person, by telephone or by a video conference link. 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. It is usual, but not necessary, for each party to be represented by a patent attorney or other legal person.

Where the hearing is held by written submissions, the Commissioner will notify the parties of the period in which the submissions must be filed.   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 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 3 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 may be 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 or the Administrative Appeals Tribunal.

Last Updated: 03/4/2014

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