IPA patent 7.3.1.4-time-for-filing-evidence-in-a-procedural-opposition — IP Australia Patent Manual of Practice and Procedure – 7.3.1.4 Time for Filing Evidence in a Procedural Opposition

Also in this Chapter: 7.3.1.1 Direction to Stay an Opposition Pending Another Action 7.3.1.2 Further and Better Particulars 7.3.1.3 Time for Filing Evidence in a Substantive Opposition 7.3.1.5 General Conduct of Proceedings 7.3.1.6 Further Directions Key Legislation: Patents Regulations: reg 5.9 Extension of time for filing evidence reg 5.12 Practice and procedure In this topic: Procedural oppositions Extending the time for filing evidence Procedural oppositions In the case of procedural oppositions, evidence is not always required or relied on. Consequently, there are no set time periods for the filing of evidence. Once the statement of grounds and particulars has been filed, the parties will be asked to indicate if they wish to file evidence. If a party intends filing evidence, they must 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 . The setting of evidentiary periods by direction is a procedural ruling. The procedure established must accord the parties natural justice, by allowing each of them to “have the opportunity to advance its case and to meet the case of [the other party]” ( Somnomed Ltd v Commissioner [2006] FCA 765 at [23]). However, provided natural justice is observed, the Commissioner can adopt any reasonable procedure. Extending the time for filing evidence Regulation 5.9 cannot be used to extend an evidentiary period in a procedural opposition. Instead, any extension must be done as a new direction under reg 5.12 . It would be inconsistent with the thrust of the Regulations for extensions of the evidentiary periods for procedural oppositions to be obtained on criteria less stringent than those applying to substantive oppositions. Consequently, the criteria considered under reg 5.9 are relevant to any request for a direction under reg 5.12 that extends the time for filing evidence. See Gutter Grip Australia Pty Ltd v Interit Pty Ltd [2024] APO 42 at [6]. Where a procedural opposition has been stayed, the delegate will also extend the period for filing evidence. The normal direction would be that: The evidence is due to be filed <xx> months after the stay has ended.