IPA patent 7.7.1.1-withdrawal-of-section-59-and-101m-oppositions — IP Australia Patent Manual of Practice and Procedure – 7.7.1.1 Withdrawal of Section 59 and 101M Oppositions

Also in this Chapter: 7.7.1.2 Withdrawal of Other Oppositions Key Legislation: Patents Act: s59 Opposition to grant of standard patent s97 Re-examination of complete specifications s101G Re-examination of complete specifications of innovation patents s101M Opposition to innovation patent Related Chapters: 5.6.13 Re-examination Note: This information applies to oppositions commenced before, on or after 15 April 2013. In this topic: The request for withdrawal Processing the request Re-examination consideration after withdrawal Where the opposition is withdrawn after the hearing Where the opposition is withdrawn before the hearing The request for withdrawal An opponent may withdraw an opposition at any time, by filing a signed notice of withdrawal in the approved form. This can be achieved by a letter, filed by the appropriate agent, clearly stating the application number, the proceeding (e.g. opposition under s59) and parties involved in the proceeding, and the party who is withdrawing their opposition. Processing the request Where an opponent files a notice of withdrawal of the opposition in the approved form, the opposition officer will acknowledge the request and give the applicant a copy of the notice as soon as practicable. Re-examination consideration after withdrawal Note: A bar-to-grant will be placed on a patent application to prevent the patent being granted pending possible re-examination. Where an opposition under section 59 or 101M is withdrawn, the Commissioner will consider any evidence filed during the proceedings to determine whether it provides grounds for re-examining the complete specification under section 97(1) or 101G(1) , respectively. Where the opposition is withdrawn after the hearing If the opposition is withdrawn after the hearing but before a decision is issued, no decision will issue in the opposition. The hearing officer will consider whether re-examination is appropriate, having due regard to the matters both on file, and argued at the hearing. Where the opposition is withdrawn before the hearing The opposition officer will check the status of the continuation/renewal fees on the application. Providing the fees are paid, a re-examination file will be created and sent to the Supervising Examiner of the relevant examination section, together with the statement of grounds and particulars and the evidence in the opposition. If a continuation or renewal fee is outstanding, the opposition officer should advise the applicant or patentee accordingly. The file should not be sent to the Supervising Examiner until the fee is paid. On receipt of the file, the Supervising Examiner in the exam section arranges for the material identified in the statement of grounds and particulars and the evidence to be considered for possible re-examination. In doing so, no more effort should be expended in obtaining copies of documents identified in the statement of grounds and particulars, but not provided in the evidence or attached to the statement of grounds and particulars, than would be given to obtaining non-patent literature in national searching. Likewise, where a large number of documents are given in the statement but not provided in evidence, discretion should be exercised as to which documents should be viewed. Where an opposition under section 59 is withdrawn before a hearing, if the opposition material provides no grounds for re-examination, the Supervising Examiner will recommend that the application be granted. If the delegate in Patent Oppositions agrees, he or she will direct the application to grant, typically providing 1 month for grant to occur. Where a section 101M opposition is withdrawn prior to hearing, if the opposition material provides no grounds for re-examination, the Supervising Examiner advises Patent Oppositions accordingly. If the delegate in Patent Oppositions agrees, no further action will be taken in this respect. If an adverse report is to issue, the re-examination procedures in the examiners manual should be followed (see 5.6.13 Re-examination ))