IPA patent 7.3.1-directions-in-opposition-proceedings — IP Australia Patent Manual of Practice and Procedure – 7.3.1 Directions in Opposition Proceedings

Also in this Chapter: 7.3.2 Directions that an Application Proceed in Different Name(s) - Section 113 Sub-chapters: 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 7.3.1.4 Time for Filing Evidence in a Procedural Opposition 7.3.1.5 General Conduct of Proceedings 7.3.1.6 Further Directions ​​​​​​​ Key Legislation: Patents Regulations: Chapter 5 Opposition reg 5.12 Practice and procedure reg 5.22 Commissioner may give directions reg 22.14 Directions not otherwise prescribed Schedule 7 Fees In this topic: Relevant Legislation The Regulations Overview Requesting a direction Directions that can be given The Regulations Chapter 5 Opposition Schedule 7 Fees Overview The Patents Act 1990 introduced into the opposition procedure “directions” for the conduct of proceedings. In broad terms, directions enable the Commissioner to have greater control over the conduct of an opposition. The relevant provisions are in regs 5.12 and 5.22 as follows: 5.12 Practice and procedure The Commissioner may: (a) decide the practice and procedure to be followed in a procedural opposition; and (b) direct the parties accordingly. 5.22 Commissioner may give directions (1) The Commissioner may give a direction in relation to an opposition to which this Chapter applies: (a) if requested by a party in writing; or (b) on the Commissioner's own initiative. (2) If the Commissioner proposes to give a direction, the Commissioner must give the parties an opportunity to make representations about the direction. (3) A direction must not be inconsistent with the Act or these Regulations. (4) The Commissioner must notify the parties of the direction as soon as practicable. See “Requesting a direction” below in relation to fees which may be applicable for making representations under regulation 5.22(2). The directions process can be initiated by a party to the action, or by the Commissioner. There is also provision in reg 22.14 for the Commissioner to “give notice” to a person to perform an act, file a document or produce evidence. These matters would normally be dealt with by the Deputy Commissioner in OH&L, and are not covered in this chapter. Requesting a direction Directions can be requested by either party, in writing. Alternatively, directions can be made by the Commissioner, without the need for a request. Where a party requests a direction, the Commissioner will provide the other party with an opportunity to make representations prior to making a decision. The fee for making a formal representation objecting to a proposed direction (i.e. leading to a hearing on the proposed direction) can be found at Schedule 7, item 230. No fee is payable for merely making representations to the Commissioner expressing a viewpoint on the proposed direction, where the representations do not comprise a formal objection to the proposed direction. Once a decision is made, the Commissioner must notify the parties of the direction. The Commissioner must only make a direction if satisfied that it is appropriate. See Mobay Corp. v Dow Chemical Co . 24 IPR 379; (1982) AIPC 90-895, in which it was said: “The first point that should be made is that the power is discretionary. Consequently, the Commissioner must be satisfied that the exercise of the power is appropriate in the circumstances.” Directions that can be given The range of directions that can be made is wide. The only limitation imposed by the Regulations is that they must not be inconsistent with the Act or Regulations. The following parts of the Manual discuss some of the more common directions. Most of these directions can be requested by a party, or proposed by the Commissioner of their own initiative.