IPA patent 7.2.6-reg-22.214---opposition-to-grant-of-a-licence — IP Australia Patent Manual of Practice and Procedure – 7.2.6 Reg 22.21(4) - Opposition to Grant of a Licence

Also in this Chapter: 7.2.1 Section 59 - Opposition to Grant of a Standard Patent , 7.2.2 Section 101M - Opposition to an Innovation Patent , 7.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent , 7.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document , 7.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A) Sub-chapters: 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 7.2.6.4 Finalising the Opposition Key Legislation: Patents Act: s6 Deposit requirements s41 Specifications: micro-organisms s104 Amendments by applicants and patentees s223 Extensions of time Chapter 15 Special provisions relating to associated technology Patents Regulations: reg 22.8 Costs reg 22.21 Protection or compensation of certain persons reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) Chapter 5 Opposition Schedule 7 Fees On this page Relevant Legislation The Act The Regulations Overview The Act Section 6 Deposit requirements Section 41 Specifications: micro-organisms Section 104 Amendments by applicants and patentees Chapter 15 Special provisions related to associated technology Section 223 Extensions of time The Regulations Chapter 5 Opposition Reg 22.21 Protection or compensation of certain persons Reg 22.8 Costs Schedule 7 Fees Overview The Patents Regulations 1991 include provisions for the protection or compensation of persons who availed themselves of or exploited, or took definite steps by contract or otherwise to avail themselves of or exploit, an invention within a period specified in: section 41(4)(c) – in which the deposit requirements of section 6(c) or (d) were not satisfied for a specification relating to a micro-organism; section 150(4) – in which an application was lapsed under section 148; or section 223(9) – in which the patent was lapsed or ceased because of the failure to do the relevant act. Such a person may apply to the Commissioner under reg 22.21(2) for a licence to exploit the invention. Under reg 22.21(4) certain persons specified in reg 22.21(3) (broadly the applicant, or patentee of the relevant patent) may oppose the Commissioner granting a licence. An opposition commences when a relevant person files a notice of opposition in the approved form within the period allowed by the regulations, and pays the appropriate fee. Subsequently, the opponent files a statement of grounds and particulars, setting out the grounds upon which grant of the licence is opposed and the facts and circumstances supporting the grounds. Where appropriate, the parties will be provided with periods for filing evidence to establish their respective cases, after which the Commissioner will hear and decide the matter. The procedures involved in this process are explained more fully in the following sections.