Evidence in oppositions

If you've received or filed a notice of opposition or are disputing or objecting to an IP right, you'll have the opportunity to submit evidence to support your case.

The evidence you supply will help you prove or disprove the particular element of your case that's in dispute.

How does it work?

The type of evidence that you provide will depend on the:

  • Type of IP that's being challenged
  • Grounds for the opposition or objection.

If you don't want to provide evidence during any of the stages, you'll need to let us know in writing.

Stages of evidence

We'll give each party the opportunity to provide evidence. There are three stages for providing and responding to evidence for oppositions:

  1. Evidence in support: The opponent of the application files evidence in support of their opposition or objection
  2. Evidence in answer: The applicant files evidence in answer to evidence in support
  3. Evidence in reply: The opponent files evidence in reply to the evidence in answer.

You can provide evidence to help prove:

  • You're the rightful owner of the trade mark
  • You've been using the trade mark from a specific date
  • You've been using the trade mark over a continuous period
  • How you came up with the trade mark
  • It's unreasonable for the registrar to allow an action, including extensions of time or the removal of a trade mark.

Supportive evidence is optional in most cases. However, if you're opposing an application to remove a trade mark for non-use, you have to provide evidence.

How to submit evidence

You'll need to:

  • Provide evidence in the form of a declaration
  • Clearly identify and refer to supporting documents in the declaration
  • Submit your form and documents to the file sharing platform specifically set up for you, as outlined in your notice.

Timeframes

You'll need to submit your:

  • Evidence in support within three months of receiving a copy of the notice of intention to defend
  • Evidence in answer within three months of being notified of the evidence in support
  • Evidence in reply within two months of being notified of the evidence in answer.

Please note that the hearing officer might not use evidence that's been submitted late.

You can provide evidence to help prove:

  • That the patent is lacking newness, inventiveness or an innovative step.
  • The specification doesn't provide enough information to build or perform the invention.
  • New relevant information that wasn't available when the patent was first examined.

How to submit evidence

You'll need to:

  • Provide evidence in the form of a declaration
  • Clearly identify and refer to supporting documents in the declaration
  • Submit your form and documents to the file sharing platform specifically set up for you, as outlined in your notice.
Innovation patents

The process is similar to that of a standard patent opposition if you want to oppose an innovation patent. The difference is that you'll need to supply your evidence in support at the same time that you file the:

  • Notice of intention to oppose
  • The statement of grounds and particulars. 

Timeframes

The opponent needs to submit their:

  • Evidence in support within three months of the statement of grounds and particulars filing date.

The applicant then needs to submit their:

  • Evidence in answer within three months of being notified of the evidence in support.

The opponent then submits their:

  • Evidence in reply within two months of being notified of the evidence in answer.

You can provide evidence to help prove:

  • The specific right will have a negative affect on your commercial interests
  • Why the application can't meet the provisions of the Plant Breeder's Right Act.

How to submit evidence

You'll need to submit your evidence along with your objection via online services or email.

Submit via online services  Submit via email

Timeframes

The opponent needs to submit their:

  • Evidence in support anytime after acceptance or within six months of when the detailed description was published.

The applicant then needs to submit their:

  • Evidence in answer within 30 days of being notified of the evidence in support.

Evidence in reply is submitted when necessary. We may ask you for additional information to assist the delegate's decision.

Once all stages of evidence are complete, the registrar will decide what further evidence, if any, is required to assess the objection. This may include a variety of actions, for example a new growing trial.

Extension of time to file evidence

You can request an extension of time to submit your evidence, however, we have strict requirements for granting extensions. You'll need to prove that either:

  • You've made all reasonable efforts to comply with filing requirements and acted promptly and diligently at all times, or
  • There were exceptional circumstances that prevented you from complying, including:
  • Natural disaster
  • Pandemic
  • Some technical malfunctions.

Either party can apply for an extension to file evidence.

Before getting started, understand that:

  • You'll have to pay fees
  • The other party will be told of the request and will have the right to object
  • Disputed extension requests sometimes need to be resolved with a special hearing.

Request via online services

Seek professional advice

We've provided some general advice on this subject.

Due to the complexities involved, we recommend that you obtain guidance from an IP professional with expertise in this field.

Engage an IP professional