Australian patent oppositions
Patent oppositions provide a mechanism to oppose various possible actions by the Patent Office on a patent or patent application. The most common oppositions are oppositions to the grant of a patent and oppositions to amendment.
Patent oppositions require different expertise to those required for drafting and prosecuting patent applications. Our attorneys have proven expertise in conducting patent oppositions. A selection of decisions in which we have acted is available here.
An introduction to patent oppositions in Australia is provided below. Further information is available at these pages:
- Opposition procedure flowchart
- Deciding whether to oppose
- What to do if my application is opposed?
- Preparing evidence
If you are familiar with Australian patent oppositions under the previous regime, you may wish to refer to our articles on recent changes to opposition practice: Procedural Changes and opposition Timing Changes.
Two Types of Oppositions
There are two types of patent oppositions – substantive and procedural oppositions. Substantive oppositions include oppositions to the grant of a patent and oppositions to the grant of an extension of term of a patent relating to a pharmaceutical substance. Procedural oppositions include oppositions to amendments, extensions of time and grants of a licence.
Initiating an Opposition
Both types of oppositions commence by the opponent filing a notice of opposition. With some exceptions, there are fixed deadlines for taking every step in the opposition process. In general, the deadline for filing a notice of opposition for:
- a substantive opposition is 3 months from the advertisement by the Patent Office of acceptance of a standard patent application or an extension of term; and
- a procedural opposition is 2 months from the relevant advertisement such as acceptance of a request for an extension of time.
If you have an interest in a particular patent or application and are considering an opposition, it is imperative to locate the patent or application and monitor for any relevant advertisement on it by the Patent Office. We offer a searching and watch service to assist with the watching requirements of our clients.
Substantive oppositions have prescribed time frames from start to finish.
Procedural oppositions have no specified time frames. Practice and procedure in procedural opposition proceedings (eg, timing of any evidence) will be decided by the Patent Office on a case by case basis.
Flowcharts of the procedure for both types of oppositions are available here. Several of the deadlines are extendible provided certain criteria are met, the criteria being designed to ensure there is no undue delay in the conduct of the opposition. After recent changes in opposition proceedings, it is best to avoid extensions.
Procedure for Substantive Oppositions
The key steps for a substantive opposition are the filing of:
- Statement of Grounds and Particulars (SGP) – The opponent must file a statement of grounds and particulars within three months of filing the notice of opposition. The statement must set out the case of the opponent and be accompanied by the documents that the opponent relies upon.
Evidence in support
Evidence will normally be filed by the opponent in support of their case. This is called evidence in support and has to be filed three months after the filing of the statement of grounds and particulars.
During the course of preparing evidence in support, an opponent may become aware of additional facts in support of one of the grounds of opposition. If this is the case, the opponent is not necessarily bound to the facts in the originally filed statement of grounds and particulars and may request amendment of the statement to reflect the additional facts. The Patent Office must be satisfied that the amendment should be made, which will be evaluated depending on the circumstances in which the amendment request is made.
Adding a new ground of opposition is treated differently to adding facts. The grounds of opposition can only be amended to correct an error or omission.
Evidence in answer
The patent applicant may file answer evidence in response to the evidence in support. Such evidence may comprise an expert’s contrary views to those of the opponent’s experts and must be filed within three months of the evidence in support.
Evidence in reply
The opponent may then file evidence in reply to the applicant’s evidence in answer, the evidence in reply being due within two months of the evidence in answer.
Please refer to our page on preparing evidence for more information on the above.
- Hearing – Once the evidentiary stages are complete, the opposition is set down for a hearing before a Delegate of the Commissioner of Patents.
Procedure for Procedural Oppositions
The key steps for a procedural opposition are the filing of:
- Statement of Grounds and Particulars (SGP) – The opponent must file a statement of grounds and particulars. The statement must set out the case of the opponent and be accompanied by the documents that the opponent relies upon.
As mentioned, the Patent Office decides the practice and procedure to be followed in a procedural opposition and directs the parties accordingly. The nature and significance of the evidence that the parties say they wish to file will be taken in to consideration in setting a timeframe for the evidence.
For example, where the procedural opposition requires evidence, the Patent Office may direct that the case be conducted in a manner similar to a substantive opposition. In contrast, the Patent Office may direct that the opposition be decided on the basis of information available at the Patent Office. This may occur if the facts are clear and neither party to the procedural opposition wishes to be heard.
- Hearing – the hearing will be usually conducted by written submissions alone.
Submission, Hearing and Decision
Once the evidentiary stages are complete, a hearing date is determined. The Patent Office has the discretion to hear the parties by way of written submissions only or via an oral hearing. In general, oral hearings are more appropriate for substantive oppositions, while for many procedural oppositions hearing via written submissions only may be more appropriate.
For oral hearings, the opponent has until 10 days before the hearing to file their summary of submissions, while the patent applicant has until 5 days before the hearing.
After the hearing, the hearing officer decides the opposition, including any award of costs.
The decision of the Commissioner may be appealed to the Federal Court of Australia. The appeal is de novo.
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