Opposition Proceedings – timing changes

Date: 2013-04-29

The new Regulations to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into force on 15 April 2013 aim to reduce delay in opposition proceedings.

This is to be achieved by:

  • providing time limits dependent on whether an opposition is classified as a ‘substantive opposition‘ or a ‘procedural opposition’;
  • restricting the grounds for extension of time applications and changing the extension application procedure; and
  • introducing new deadlines for pre-hearing submissions.

These new changes are discussed in more detail below.

What is the difference between a ‘substantive opposition’ and a ‘procedural opposition’?

The new Regulations split opposition proceedings into two categories; namely:

  • substantive oppositions which 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; and
  • procedural oppositions which includes oppositions to amendments, extensions of time  and grants of a licence.

What are the new time limits for oppositions?

The new time limits depend on whether the opposition is a substantive opposition or a procedural opposition.

Procedural oppositions

Shorter time limits apply for procedural oppositions. The deadline to file the Notice of Opposition is 2 months from advertisement of a relevant change in the status of an application. The Statement of Grounds and Particulars is due 1 month after the Notice of Opposition is filed. The Commissioner has discretion to set the time limits for other steps in procedural oppositions.

Substantive Opposition

As shown in the diagrams below, procedure for substantive oppositions has been shortened slightly. The period for submitting evidence in reply will be reduced from 3 months to 2 months.

How will applications for an extension of time change?

The main timing change comes as a result of tighter regulation of the grounds on which an extension of time application can be granted.

Under the pre 15 April 2013 Regulations (which have now been repealed), the Commissioner had a broad discretion to grant extensions of time, which was seen to unnecessarily prolong the time limits for filing evidence.

The new Regulations are designed to restrict the number of applications which are allowed. Specifically, the person requesting an extension will need to satisfy the Commissioner that:

  • the person has made reasonable efforts to comply with the time limit;
  • the person has acted promptly and diligently but has been unable to ensure that the evidence is filed within the time limit; or
  • exceptional circumstances warrant the extension.

The changes make it much more difficult to obtain an extension of time, meaning that oppositions proceedings will be shorter and involve more intense periods of evidence preparation.

Another change under the new Regulations is that no short “grace period” is available. Specifically, under the pre 15 April 2013 Regulations, when issuing a notice that an extension of time application had been refused, the Commissioner had a discretion to grant a short extension to allow a party to file evidence it had immediately available.

Under the new Regulations, extension of time applications must be made before the relevant submission deadline so that, in the event of the application being refused, a party will still have time to file any evidence it has already obtained before the deadline.

What is the deadline for pre-hearing submissions

The new Regulations also set out a new deadline for filing pre-hearing written submissions. Opponents must file their submissions 10 days prior to hearing, while applicants must file 5 days before the hearing.

This ensures that the hearing officer receives submissions in advance of a hearing. This change is intended to facilitate the hearing officer’s preparation for the hearing, as submissions often narrow the matters of contention between the parties.

The Commissioner will be able to sanction parties who fail to comply with the timeframes for filing their submissions. This sanction would be by way of consideration of any costs awarded between the parties.