IPA patent 7.7.1-withdrawal-of-an-opposition — IP Australia Patent Manual of Practice and Procedure – 7.7.1 Withdrawal of an Opposition

Also in this Chapter: 7.7.2 Dismissal of an Opposition 7.7.3 Withdrawal of an Opposed Application Sub-chapters: 7.7.1.1 Withdrawal of Section 59 and 101M Oppositions 7.7.1.2 Withdrawal of Other Oppositions ​​​​​​​ Key Legislation: Patents Act: s18 Patentable inventions s40 Specifications s59 Opposition to grant of standard patent s97 Re-examination of complete specifications s98 Report on re-examination s101G Re-examination of complete specification of innovation patents s137 s141 Withdrawal of applications Patents Regulations: Chapter 5 Opposition reg 5.26 Withdrawal of opposition Related Chapters: 7.9 Costs In this topic: Relevant Legislation The Act The Regulations Overview Failure to take action in an opposition does not constitute withdrawal Costs when an opposition is withdrawn The Act Section 18 Patentable inventions Section 40 Specifications Section 59 Opposition to grant of standard patent Section 97 Re-examination of complete specifications Section 98 Report on re-examination Section 101G Re-examination of complete specification of innovation patents Section 141 Withdrawal of applications The Regulations Chapter 5 Opposition Overview While sections 137 and 141 provide for an opposed patent or application to be surrendered or withdrawn, respectively, an opponent may withdraw an opposition at any time, by filing a notice of withdrawal in the approved form (available on the IP Australia website). For notices of withdrawal filed before 25 August 2018 there is a requirement that the notice be signed. The provision for withdrawal of an opposition is reg 5.26 . Withdrawal will only be effective on the basis of written advice in the approved form. Failure to take action in an opposition does not constitute withdrawal Where an opponent fails to take action in an opposition, even if this is done deliberately, it does not constitute withdrawal of the opposition. Similarly, if an opponent fails to appear at a hearing, either in person or by written submissions, the opposition is not deemed to be withdrawn. Irrespective of which party fails to appear at a hearing, the Commissioner is required to consider the evidence filed and determine the opposition. (See Dart Industries v. Crest International (1979) 49 AOJP 2020) Costs when an opposition is withdrawn It is common practice for a withdrawing party to negotiate with the other party prior to the withdrawal, in order that each party bears its own costs. If an opposition or an opposed application is withdrawn before a hearing, the Commissioner will not automatically make an award of costs but may do so on the application of a party. For information on costs see 7.9 Costs .