IPA patent 7.8-hearings-and-decisions — IP Australia Patent Manual of Practice and Procedure – 7.8 Hearings and Decisions

Also in this Section: 7.1 Role and Powers of the Commissioner in Hearings 7.2 Oppositions, Disputes and other proceedings-Procedural summaries 7.3 Directions 7.4 Opposition Documents, Requirements and Amendments 7.5 Evidence ​​​​​​​ 7.6 Production of Documents, Summonsing Witnesses 7.7 Withdrawal and Dismissal of Oppositions ​​​​​​​ 7.9 Costs 7.10 The Register of Patents 7.11 Extensions of Time and Restoration of Priority 7.12 Extensions of Term of Standard Patents Relating to Pharmaceutical Substances 7.13 Orders for Inspection of non OPI Documents 7.14 Appeals AAT, ADJR, The Courts 7.15 Computerised Decisions Sub-chapters: 7.8.1 Setting Down Hearings 7.8.2 Hearings Procedure 7.8.3 Ex Parte Hearings 7.8.4 Natural Justice and Bias 7.8.5 Principles of Conduct 7.8.6 Decisions 7.8.7 Further Hearings 7.8.8 Final Determinations 7.8.9 Quality 7.8.10 Appointment of Hearing Officers and Assistant Hearing Officers, Hearing Officer Standards Panel, Hearing Officer Delegations ​​​​​​​ Key Legislation: Patents Act: s17 Directions to co-owners s32 Disputes between applicants etc. s35 Applications by eligible persons following revocation by Commissioner s36 Other applications by eligible persons s42 Micro-organisms ceasing to be reasonably available s60 Hearing and decision by Commissioner s100A Refusal to grant patent--re-examination before grant s101 Revocation of patent--re-examination after grant s101N Hearing and decision by the Commissioner s106 Amendments directed by Commissioner: patents s107 Amendments directed by Commissioner: applications for standard patents s137 Revocation on surrender of patent s216 Exercise of discretionary power by Commissioner Patents Regulations: reg 3.24 Commissioner may request samples and viability statement reg 3.25 Request for Commissioner's certification authorising release of sample of a micro-organism reg 5.19 Hearing and decision--re-examination reg 5.20 Hearing and decision--other circumstances ​​​​​​​ reg 10.2C Amendments not allowable for complete specifications reg 22.22 Exercise of discretionary powers by Commissioner In this topic: Relevant Legislation The Act The Regulations Overview Office Practice ​​​​​​​ The Act Section 60 Hearing and decision by Commissioner Section 101N Hearing and decision by Commissioner Section 216 Exercise of discretionary power by the Commissioner The Regulations Regulation 5.19 Hearing and decision – re-examination Regulation 5.20 Hearing and decision – other circumstances Regulation 22.22 Exercise of discretionary powers by the Commissioner Overview The Act requires the Commissioner to afford all parties to an action the opportunity to be heard. General provisions for hearings are set out in s216(1) and reg 22.22(1) : s216(1) : The Commissioner must not exercise a discretionary power under this Act adversely to any person applying for the exercise of that power without first giving that person a reasonable opportunity to be heard. reg 22.22(1) : The Commissioner must give a person an opportunity to be heard before exercising a discretionary power under the Act or these Regulations adversely to the person. Note: Section 216 only requires the Commissioner to hear the person requesting the exercise of the discretion, whereas reg 22.22 also requires the Commissioner to hear a person who is adversely affected by the decision. Specific provisions for the Commissioner to hear the parties involved in standard opposition procedures are listed in Chapter 5 of the Regulations. Similarly, specific provisions for the Commissioner to hear certain persons are given in s17 , s32 , s35 , s36 , s42 , s100A , s101 , s106 , s107 , s137 , reg 3.24 , reg 3.25 and reg 10.2C . Office Practice Whenever a person would have rights to seek a remedy by appeal, prerogative writ or review, e.g. under the Administrative Decisions (Judicial Review) Act, that person is normally offered the opportunity to be heard. This situation may result in an inter partes hearing, but not to an opposition in terms of the Patents Act.