Patent opposition – dismissal: Ronald Neville Langford v David Gerard Clark [2008] APO 5 (16 March 2009)

Date: 2009-04-16
Author:

All of the significant applications or requests made under the Australian patents legislation—be they for grant of patent rights, pharmaceutical patent term extensions, extensions of time to do a relevant act; amendment of patent specifications or the Register, or grant of licences to exploit an invention—may be opposed, and this is why this decision of the Australian Patent Office relating to the dismissal of patent opposition proceedings should be broadly relevant.

All of the significant applications or requests made under the Australian patents legislation—be they for grant of patent rights, pharmaceutical patent term extensions, extensions of time to do a relevant act; amendment of patent specifications or the Register, or grant of licences to exploit an invention—may be opposed, and this is why this decision of the Australian Patent Office relating to the dismissal of patent opposition proceedings should be broadly relevant.

The decision relates to a request for dismissal of an opposition to an application for an extension of time to late pay a renewal fee. The question for the Office was whether the Opponent, having specified the relevant ground of opposition, had identified facts that were material to the grounds set forth in its Statement of Grounds & Particulars, this being relevant as to whether the request for dismissal should be granted. 

In its deliberation,1 the Office formed the view that a 2005 amendment to the Federal Court of Australia Act 1976 (Cth) relating to the power of the court to give summary judgement was also intended to apply in federal tribunals (such as the Office). According to the Office, the impact of the amendment in relation to dismissal of patent opposition proceedings has been such that:

the previous test of whether an opposition is obviously or manifestly groundless or untenable has been relaxed slightly, and instead the question is whether there is no reasonable prospect of success.

On the assumption that the Office applies this more ‘relaxed’ test (in this decision the opposition was not dismissed), it is expected that requests for dismissal should be granted more regularly so that there is now an increased risk that opponents may be shut out of opposition proceedings.

The practical outcome is that now more than ever, opponents must be very careful to clearly identify the material facts that particularise each ground of opposition in their Statement of Grounds & Particulars.

Endnotes

1. Ronald Neville Langford - David Gerard Clark [2008] APO 5 (16 March 2009)

This article was written by Tom Gumley, Partner, Freehills Patent Attorneys.