Challenge someone else's IP

Anyone can question the registration, grant or validity of an intellectual property (IP) right. Here's how to challenge an IP right.

What can be challenged?

Ownership of IP

If you have an IP right and someone else claims they own it, you can challenge their claim.

Registration or granting of new IP

If you believe a trade mark, patent, or plant breeder's right shouldn't be given protection, you can oppose its registration.

Extension of time request

You can object to an extension of time request for someone else's IP. For example, if you don't believe an extension request to pay a renewal fee meets the requirements, you can oppose it.

Re-examination of a granted patent

If you question the validity of a patent, you can request to have it re-examined.

Request examination of a registered design

You can request examination of someone else's design if you believe it's not new or distinctive.

Removal of a trade mark for non-use

If you believe the owner isn't using their registered trade mark, you can file a non-use application to remove it from the trade marks register.

How does it work?

The opposition process may differ depending on the IP right, however, it generally follows the steps below:

  1. You file a notice of opposition, which includes a statement of grounds and particulars outlining why you're opposing the application. Your opposition is shared with the applicant

  2. If the applicant decides to defend their application, they file a notice of intention to defend within one month of receiving your notice. If there's no objection, your opposition is successful and the application lapses

  3. You and the opposing party provide evidence to support your arguments

  4. Either of you can request a hearing to resolve the issue, including making submissions to support your case

  5. The hearing officer evaluates evidence and submissions and makes a decision.

If your opposition is successful, the party being opposed may be allowed to overcome issues in their application, depending on the type of IP. If unsuccessful, the IP right will be registered or granted.

Action you can take

Depending on the type of IP right, you can challenge a number of actions before or after the right has been registered or granted.

Challenges to trade marks are known as oppositions. You can oppose actions relating to registration and request removal of trade marks that aren't being used. 

Oppose registration of a trade mark

What you can oppose

You have the right to oppose any accepted trade mark. For example, you may choose to oppose if you believe it's too similar to your own or the applicant isn't the true owner.

When to oppose

You'll need to file your:

  • Notice of intention to oppose within two months of the trade mark being accepted
  • Statement of grounds and particulars one month after the intention to oppose.

You can find details of the registration in the Australian Official Journal of Trade Marks

How to oppose

You'll need to:

  • Log in to online services
  • File a notice of intention to oppose and pay the fees
  • File a statement of grounds and particulars.
Log in to online services

Oppose amendment of a trade mark

What you can oppose

You can oppose an amendment to a trade mark application. For example, you may choose to oppose if you believe you'll be adversely affected.

When to oppose

The notice must be filed within one month of the amendment request being advertised in the Australian Official Journal of Trade Marks.

How to oppose

You'll need to:

  1. Log in to online services
  2. File a notice of intention to oppose
  3. Pay the fees.
Log in to online services 

Oppose an extension of time

What you can oppose

You can oppose an application for a time extension if you believe sufficient time has already been allowed.

When to oppose

You'll need to file your opposition within two months of the date the request is advertised.

We advertise extensions of time of more than three months in the Australian Official Journal of Trade Marks.

How to oppose

You'll need to:

  1. Log in to online services
  2. File a notice of opposition to an extension of time
  3. Pay the fees.

Log in to online services

Request removal of a trade mark that isn't used

What you can request

Removal of a trade mark if you believe the owner:

  • Hasn't used the trade mark
  • Hasn't used the trade mark in good faith
  • Never intended to use the trade mark.

When to request a removal

Any time after the trade mark has been filed.

If you believe that a trade mark hasn't been used in three years, you'll need to file after:

  • Five years or more have passed since the filing date of the application, if the trade mark was filed before 24 February 2019
  • Three years or more have passed since the details of the trade mark were registered, if the trade mark was filed on or after 24 February 2019.

How to request removal

Your application should contain:

  • The number of the trade mark which is to be removed
  • The name and address of the person applying for removal
  • The address for service in Australia or New Zealand
  • The ground(s) for removal
  • Whether the trade mark is to be removed for some or all of the goods or services
  • Whether you're aware of any court action pending in relation to the trade mark.

You'll need to:

  1. Log in to online services
  2. Submit an application for removal of a trade mark
  3. Pay the fees.

Log in to online services

Outcomes

The trade mark will be removed if the applicant:

  • Doesn't oppose your request for removal
  • Does oppose your request for removal, but their opposition is unsuccessful.

If the applicant opposes your request for removal and they're successful, the trade mark registration will remain in place.

Response times

Below are the current response times for oppositions and hearings:

Trade mark oppositions and hearings Current approximate waiting time
Statement of grounds and particulars processing Approximately 1 month from filing
Decision without a hearing Approximately 2 months from request
Written submission hearing date Approximately 7 months from request
Oral hearing date Approximately 12 months from request
Hearing decision Approximately 3 months from hearing

Challenges to patents are known as oppositions. You can oppose actions relating to the grant of a patent, and request re-examination after it's been granted. 

Oppose the grant of a patent

What you can oppose

If you believe an invention shouldn't be granted a patent, you can challenge its validity by filing an opposition. You can oppose:

  • An accepted standard patent application
  • A certified innovation patent
  • Certain amendments to patent specifications
  • Some applications for extensions of time to restore a patent or patent application
  • Term extensions for a pharmaceutical patent
  • Granting a licence to use an invention in certain circumstances.

When to oppose

You'll need to file:

  • Within three months of advertisement of acceptance in the Australian Official Journal of Patents for a standard patent application
  • Within two months of notification of a licence grant application
  • Any time after an innovation patent has been certified.

The timeframes for opposing other actions vary. 

Before you file, we recommend you speak to our patent opposition team for information on the filing process. You can give us a call on 02 6283 2455 between 9am and 5pm Canberra time. We're here from Monday to Friday.

How to oppose

You'll need to:

  • Log in to online services
  • File a notice of intention to oppose and pay the fees
  • File a statement of grounds and particulars.

Log in to online services

Oppose an extension of time

What you can oppose

You can oppose someone's application for an extension of time if you believe sufficient time has already been allowed.

When to oppose

You'll need to file your opposition within two months of the date the request is advertised.

We advertise extensions of time of more than three months in the Australian Official Journal of Patents.

How to oppose

You'll need to:

  1. Log in to online services
  2. File a notice of opposition to an extension of time
  3. Pay the fees.

Log in to online services

Third party request for re-examination of a patent

You can request a re-examination of someone else's patent if you believe:

  • The invention claimed in the patent isn't novel, innovative or inventive
  • The invention isn't something that can be patented
  • The invention was used in public before the patent was filed
  • The patent specification doesn't provide enough detail to build or perform the invention
  • The invention isn't consistent with the description
  • The claims are so unclear that it's impossible for a skilled person to understand them
  • The invention is a biological process for generation of human beings (such as human cloning).

When to request a re-examination

You can request a re-examination of:

  • A standard patent after it's been granted
  • An innovation patent after it's been certified.

How to request a re-examination

You'll need to:

  1. Submit a request for re-examination through our online services
  2. Tell us why you believe the patent needs to be re-examined
  3. Include any documents as evidence to support your argument
  4. Pay the fees.

Log in to online services

Outcomes

The re-examination won't proceed if the Commissioner decides the issues:

  • Raised by the third party are incorrect, and/or
  • Have been overcome by amendment.

If the re-examination does proceed and the Commissioner believes the patent should be revoked, a hearing may be needed.

At the hearing, the Commissioner (or delegate) will decide to either:

  • Revoke the patent
  • Not revoke the patent and end the re-examination process, or
  • Not revoke the patent, but request further re-examination.

You can challenge a design right by asking for it to be examined or by raising issues around its ownership.

Request examination of a registered design 

You can request examination of someone else's design if you believe it's not new or distinctive.

When to request an examination

Any time after it's been registered.

How to request an examination

Your request should include:

  • The official form
  • Any documents to support your argument that the design is not new or distinctive.

You'll need to:

  1. Submit a request for examination through our online services
  2. Pay half of the total fee. The owner will have to pay the other half if they want to take part in the examination.

Log in to online services

Once the fees are paid, we'll start the examination within two weeks.

Outcomes

If we find grounds to revoke the design, we'll send you and the other party a report detailing all the issues. We'll also tell the applicant they have six months to overcome the grounds or request a hearing.

If we don't find grounds for revoking the design or if they're overcome in time, we'll let you and the applicant know that we intend to certify the design.

You'll both be given the opportunity to request a hearing regarding our decision.

If the applicant doesn't overcome the grounds or request a hearing within six months of our report, registration will cease.

If neither party requests a hearing following our intention to certify, we'll certify the design.

Oppose an extension of time

What you can oppose

You can oppose someone's application for an extension of time if we've advertised it for opposition purposes. 

When to oppose

You'll need to file your opposition within one month of the date the application is advertised. We advertise extensions of time of more than three months in the Australian Official Journal of Designs.

How to oppose

You'll need to:

  1. Log in to online services
  2. File a notice of opposition to an extension of time
  3. Pay the fees

Challenges to plant breeder's rights (PBR) are known as objections. You can object actions relating to the granting of a PBR.

Object to the granting of a PBR

You can object to the granting of a PBR if:

  • You believe your commercial interests would be affected by the grant of that PBR, and
  • The application can't meet the requirements under the Plant Breeder's Rights Act 1994.

What you can object to

If you believe a variety shouldn't be granted a PBR because it's incorrect, incomplete or doesn't fulfil the conditions of the Plant Breeder's Rights Act 1994, you can object to its registration.

When to object

You'll need to lodge an objection:
  1. After we accept part one of the application under provisional protection, or
  2. Within six months of the public notification period, which is triggered by the description of the variety being published in the Plant Varieties Journal.

How to object

  1. Lodge your written objection with the PBR Registrar through online services or by emailing us
  2. Pay the fees

Log in to online services

 Request a pause in proceedings

A challenge to an IP right may be temporarily paused if both parties agree to enter negotiations privately.

What you can request

You can request a cooling-off period if you and the other party have agreed to enter negotiations.

When to make a request

A cooling-off period may be requested at any time after a statement of grounds and particulars has been filed but before:

  • We've made a decision on the opposition, or
  • The opposition has been dismissed.

Only one cooling-off period, for six months, may be requested per opposition. If both parties agree, it can be extended for a further six months.

Either party may request the cooling-off period to be discontinued early.

The opposition will resume when the cooling-off period ends.

How to make a request

  • Create an account with our online services
  • Submit an application for cooling-off period.

Request a stay of proceedings in a patent opposition

The Commissioner will typically grant a stay of proceedings if:

  • There's another action in relation to the application that may impact on the proceeding, and/or
  • You and the other party have agreed to enter settlement negotiations.

When to make a request

A stay of proceedings may be requested at any time during the course of a patent opposition.

The length of the stay will depend on the reason for the request. Normally, the Commissioner will provide a three-month stay to allow for settlement negotiations to take place.

Further stays can be requested and are considered on a case-by-case basis.

How to make a request

You can request a stay in proceedings via our online services.

Log in to online services

Get professional assistance

We've provided some general advice on the different ways that an IP right may be challenged.

If you need help, we recommend that you engage an IP attorney for specific advice on your situation.

Engage an IP attorney