The opposition process

Filing a notice of opposition and statement of grounds and particulars

If you want to oppose the granting of a patent application, you must file a notice of opposition and a statement of grounds and particulars.

'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 to understand the case they have to respond to. You should list any documents, circumstances and general knowledge you are relying on to oppose the patent application.

Before you file the notice, statement and evidence, you should contact us to speak to our Patent Opposition team 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.

Opposition to the grant of a standard patent

A notice of opposition must be filed within three months of the advertisement of the acceptance of a standard patent application. After you have filed the notice you have a further three months to 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 at the same time, or you must indicate that the document is open for public inspection at IP Australia.

Opposition to an innovation patent

If you are opposing an innovation patent, the notice of opposition and statement of grounds and particulars must be filed at the same time.

You must also include 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 certification of the patent. 

A copy of each document must be filed at the same time, or you must indicate that the document is open for public inspection at IP Australia or has been filed as part of the evidence.

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.

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.

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

Opposition to an 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 three months.

The hearing of 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.

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.

Oral hearing

Before the hearing, each party is required to provide a written summary of their submissions to assist the hearing officer.

The opponent must file their summary of submissions at least 10 days prior to the hearing. The applicant must file theirs at least five 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 professional.

Hearing by written submissions

Where the hearing is held by written submissions, the Commissioner will notify the parties of the period in which the written submissions must be filed.

Outcomes of an opposition hearing

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

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

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

If the opposition is successful, the patent applicant 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. Appeals from opposition decisions are made to the Federal Court of Australia.

Last updated: 
30 May 2016