IPA patent 7.2.5.3-evidence-and-evidentiary-periods — IP Australia Patent Manual of Practice and Procedure – 7.2.5.3 Evidence and Evidentiary Periods

Also in this Chapter: 7.2.5.1 Commencing the Opposition - Filing a Notice of Opposition 7.2.5.2 Filing the Statement of Grounds and Particulars ​​​​​​​ 7.2.5.4 Finalising the Opposition ​​​​​​​ Key Legislation: Patents Act: s223 Extensions of time Patents Regulations: reg 5.11 Statement of grounds and particulars reg 5.12 Practice and Procedure Related Chapters: 7.3.1.4 Time for Filing Evidence in a Procedural Opposition 7.5 Evidence Note: The statement of grounds and particulars and accompanying 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. On this page: General information Physical evidence Filing evidence Extending the time for filing evidence Further evidence General information Where a party wishes to file evidence the evidentiary periods will be set by direction under reg 5.12 . The process and procedure for filing evidence is summarised below. Physical evidence Physical evidence should not be filed. Rather, the documentary evidence should include a description of the physical item including, as appropriate, a photograph or video recording as well as an indication of the place at which the item may be inspected. The Commissioner may subsequently order inspection of the item or direct that it be filed, as the Commissioner determines to be appropriate. For information on evidence in general see 7.5 Evidence ​​​​​​​. Filing evidence Evidence is not always required or relied on in a procedural opposition. Therefore, once the statement of grounds and particulars has been filed, the parties will be asked to indicate if they wish to file evidence. Note: The provisions of reg 5.11(2) , that documents mentioned in the statement of grounds and particulars must be filed with the statement, does not mean the documents are in evidence. However, it is the current practice of the Commissioner when acknowledging the filing of the Notice of Opposition to inform the parties that she intends to direct that any documents accompanying the statement of grounds and particulars will be treated as evidence in support of the opposition. That direction is then made when the Commissioner acknowledges that the statement has been filed. If no such direction has been made, then any documents accompanying the statement that the opponent intends to rely on to establish the grounds of opposition must be filed with the evidence in support. A party intending to file evidence will be required to specify the nature and significance of the evidence, and how long they will need to prepare the evidence. A delegate will consider the information, and propose a direction under reg 5.12 . Where a direction is given for a party to file evidence, the other party will normally be provided with a period in which to file responding evidence. For more information on directions for evidence in a procedural opposition, see 7.3.1.4 Time for Filing Evidence in a Procedural Opposition . When evidence is filed, the opposition officer will acknowledge receipt to the parties and give a copy of the evidence to the other party. Extending the time for filing evidence The Commissioner may extend an evidentiary period by direction under reg 5.12 . For more information see 7.3.1.4 Time for Filing Evidence in a Procedural Opposition Further evidence Further evidence is not available for oppositions.