IPA patent 7.2.6.4-finalising-the-opposition — IP Australia Patent Manual of Practice and Procedure – 7.2.6.4 Finalising the Opposition

Also in this Chapter: 7.2.6.1 Commencing the Opposition - Filing a Notice of Opposition 7.2.6.2 Filing the Statement of Grounds and Particulars 7.2.6.3 Evidence and Evidentiary Periods ​​​​​​​ Key Legislation: Patents Regulations: reg 5.20 Hearing and decision--other circumstances reg 22.21 Protection or compensation of certain persons reg 22.26 Review of decisions Schedule 7 Fees Related Chapters: 7.3.1 Directions in Opposition Proceedings 7.8 Hearings and Decisions 7.9 Costs On this page Overview Timing and requirements for requesting a hearing Nature of the hearing Oral hearings Hearings by written submissions The decision Review of a decision​​​​​​​ Overview Providing the opposition has not been withdrawn or dismissed, the next step in the opposition process is a hearing of the matter, after which a decision is issued. The function of the hearing is to enable the parties to fully present their views supported by reasons and evidence, in order that the hearing officer is in a position to make a correct and just decision. An opposition will be set for hearing either on the request of a party or on the Commissioner’s own initiative. Once the hearing officer decides the opposition, the parties will be notified of the decision as soon as practicable. Timing and requirements for requesting a hearing Providing any evidentiary periods have ended, and the opposition has not been withdrawn, dismissed or previously heard and decided, the opponent may request a hearing. The request must be made in the approved form (available on the IP Australia website) and be accompanied by the appropriate fee ( Schedule 7, item 230 ). On receipt of a request for a hearing, the opposition officer will give a copy to the applicant for a licence. Nature of the hearing The hearing may be held orally or by written submissions at the Commissioner’s discretion ( reg 5.20(3) ). Oral hearings Where the Commissioner decides on an oral hearing, the opposition officer will notify the parties of the date, time and place of the hearing. For more information on the hearing process, see 7.8 Hearings and Decisions . Reg 5.20(4) requires both parties to file a summary of their submissions prior to the hearing. The opponent must file the summary at least 10 business days before the hearing, and the applicant for a licence at least 5 business days before the hearing. If a party fails to file a summary of submissions within the time prescribed by the regulations, under reg 5.20(6) , the hearing officer will consider this in making an award of costs in the opposition. Note: The summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner. On receipt of a summary of submissions, the opposition officer will give a copy of a party’s summary to the other party as soon as practicable. Hearings by written submissions Where an opposition is set for hearing by written submissions, the delegate will issue a direction to the parties specifying the process and time frame in which the written submissions are to be filed (see 7.3.1 Directions in Opposition Proceedings ). For more information on the hearing process, see 7.8 Hearings and Decisions . The decision Once the opposition is decided, the parties will be notified of the decision. For more information on decisions see 7.8 Hearings and Decisions . The decision will usually include an award of costs in the opposition. For more information on costs see 7.9 Costs . Review of a decision An application for review of the hearing officer’s decision in an opposition under reg 22.21(4) to a request for a licence may be made to the Administrative Appeals Tribunal under subparagraph 22.26(2)(a)(vi) .