IPA patent 7.2.2.1-commencing-the-opposition---filing-the-opposition-documents — IP Australia Patent Manual of Practice and Procedure – 7.2.2.1 Commencing the Opposition - Filing the Opposition Documents

Also in this Chapter: 7.2.2.2 Evidence and Evidentiary Periods 7.2.2.3 Finalising the Opposition Key Legislation : Patents Act: s18 Patentable inventions s33 Applications by opponents etc. s40 Specifications Chapter 9A Examination, re-examination and opposition – innovation patents s101E Certificate of examination s101M Opposition to innovation patent ​​​​​​​ s223 Extensions of time ​​​​​​​ Patents Regulations: ​​​​​​​ reg 5.2 Definitions reg 5.6 Notice of opposition and statement of grounds and particulars--section 101M opposition reg 5.17 Dismissal on request reg 5.18 Dismissal on initiative of Commissioner reg 22.8 Costs reg 23.36 Transitional provisions Sch 7 Fees Related Chapters: 7.3.1.2 Further and Better Particulars . 7.4.2 The Statement of Grounds and Particulars 7.4.3 Amending Opposition Documents 7.7.1 Withdrawal of an Opposition 7.7.2 Dismissal of an Opposition Note: The opposition documents, the evidence in an opposition and the summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner. Please contact the Oppositions and Examination Practice section by email at OHL@ipaustralia.gov.au or by phone on 1300 651 010 before filing the opposition documents. On this page Timing and requirements for filing the opposition documents The statement of grounds and particulars Open for public inspection Initial processing of the opposition documents Deficient particulars - further and better particulars Amending opposition documents The notice of opposition The statement of grounds and particulars Dismissal of the opposition The Commissioner may dismiss the opposition if the prescribed documents are not filed with the statement Other grounds for dismissal Requests for dismissal of the opposition Withdrawal of the opposition​​​​​​​ Timing and requirements for filing the opposition documents When an innovation patent is examined and the Commissioner is satisfied that the requirements for certification have been met, a notice to this effect is advertised in the Official Journal of Patents under section 101E(2)(b) . At any time after certification, a person may oppose an innovation patent under reg 5.6 . To commence the opposition, the person must: pay the fee for filing a notice of opposition (see Schedule 7, item 216 ); and file all of the following documents with the Commissioner at the same time : a notice of opposition in the approved form (available on the IP Australia website); a statement of grounds and particulars in the approved form (available on the IP Australia website); the evidence in support of the of the opposition; and a copy of each document mentioned in the statement of grounds and particulars, unless : i. the document is open for public inspection and relates to a patent or patent application and/or ii. the document has been filed as evidence in support.​​​​​​​ The statement of grounds and particulars The statement of grounds and particulars must set out the grounds the opponent intends to rely on to establish the opposition, and the facts and circumstances (the particulars) forming the basis for the grounds ( reg 5.2 “Definitions” ). The grounds of opposition under section 101M are limited to one or more of the following: a. that the patentee is either: i. not entitled to the patent ( section 33(3) ) ii. entitled to the patent but only in conjunction with some other person ( section 33(4) ); b. that the complete specification does not comply with section 40(2), 40(3) or 40(3A) ; c. that the invention is not a patentable invention because it does not comply with paragraph 18(1A)(a), (b) or (c) ; d. that the invention is not a patentable invention under subsection 18(2) or (3) . For more information on the function and content of the statement of grounds and particulars see 7.4.2 The Statement of Grounds and Particulars . The approved form of the statement of grounds and particulars (available on the IP Australia website) contains a Schedule in which every document mentioned in the statement must be listed, together with an indication that: the document has been filed with the statement; or the document has been filed with the evidence in support; or the document is open for public inspection (see “Open for public inspection” below) and relates to a patent or patent application. (Where the document is made open for public inspection on the file of a related Australian patent or patent application, the opponent must identify the relevant patent or patent application.) Note: The requirement of reg 5.6(1)(c) , that documents mentioned in the statement of grounds and particulars must be filed with the opposition documents, does not replace the need for the cited documents to be adduced in evidence. All documents that the opponent intends to rely on to establish the grounds of opposition must be filed as part of the evidence in support. Open for public inspection A patent document is open for public inspection for the purposes of reg 5.6(1)(c) if, at the time of filing the statement: the document is open for public inspection at the patent office in Australia; or the document relates to a PCT application designating Australia that had been published by World Intellectual Property Organisation (WIPO). Unless the document is on the file of a related Australian application and thereby open for public inspection at the patent office in Australia, documents that are not open for public inspection include: any overseas patent specification (eg. US, EP, GB specifications); the specification of a patent application filed via the PCT designating Australia, that had not been published by WIPO at the time of filing the statement of grounds and particulars; and citations raised in examination and re-examination reports. Initial processing of the opposition documents Once the opponent has complied with requirements of reg 5.6(1)-(2) , the opposition officer will acknowledge receipt of the documents to the parties, and give the patentee a copy as soon as practicable. Deficient particulars - further and better particulars Where the particulars of the opposition are deficient, the patentee may request the Commissioner to issue a direction for further and better particulars. For more information on directions for further and better particulars see 7.3.1.2 Further and Better Particulars . The notice of opposition Under regs 5.14 and 5.15 , an opponent may request an amendment to the notice of opposition to correct a clerical error or obvious mistake, or to change the name of the opponent where the opponent’s right or interest in an opposition is transferred to another person. For more information, see 7.4.3 Amending Opposition Documents . The statement of grounds and particulars Under reg 5.16 , an opponent may request the Commissioner in writing to amend its statement of grounds and particulars to: correct an error or omission in the grounds of opposition; or update the grounds of opposition to reflect an amendment to the complete specification to which the statement relates; or to amend the facts and circumstances (the particulars) forming the basis for the grounds. However, the Commissioner has no power to amend the statement where an application for dismissal of the opposition is under consideration ( reg 5.16(3)(a) ) For more information, see 7.4.3 Amending Opposition Documents . The Commissioner may dismiss the opposition if the prescribed documents are not filed with the statement If copies of the required documents are not filed with the opposition documents or as part of the evidence in support, the Commissioner may dismiss the opposition under reg 5.18(2) . Other grounds for dismissal Other grounds for dismissal of an opposition include that the opposition has no reasonable prospects of success. For more information see 7.7.2 Dismissal of an opposition . Requests for dismissal of the opposition Under reg 5.17 a patentee may, within 1 month of the receipt of the statement of grounds and particulars, request the Commissioner to dismiss an opposition. For more information, see 7.7.2 Dismissal of an Opposition . Withdrawal of the opposition Under reg 5.26 , an opponent may withdraw an opposition at any time, by filing a notice of withdrawal in the approved form (available of the IP Australia website). For more information, see 7.7.1 Withdrawal of an Opposition .