Australia: Raising the Bar for patent opposition procedures

Certain changes prescribed by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 ( are due to come onto effect on 15 April 2013. In addition to the widely-publicised tightening of patentability standards and patent examination procedures, a notable change will be the streamlining of patent opposition procedures and, of particular note, the introduction of regulations to make it more difficult to secure extensions of time for filing evidence.

A patent opposition is a cost-effective tool by which the validity of a standard patent application or an innovation patent may be challenged at the Patent Office (compared to costly litigation in the Federal Court). Currently, a Notice of Opposition to a standard patent application must be filed within 3 months of the publication a Notice of Acceptance of the application. A statement of grounds and particulars must be filed within three months of the filing date of the Notice of Opposition. Rounds of evidence then commence, with the opponent having three months to file evidence in support, followed by the applicant having three months to file evidence in answer and the opponent then having an optional further three months to file evidence in reply. A hearing is set down for about three months after the last round of evidence. If these timelines are followed, a decision can issue within 12 to 18 months from the filing of the Notice of Opposition. However, the extension of time provisions available for filing evidence are widely used and the current provisions lie heavily in favour of extensions of time being granted. Therefore, in general, a decision usually issues two-and-a-half to three years from the date of filing of the Notice of Acceptance.

Under the new Act, opposition procedures have been streamlined to make it harder to secure extensions of time for filing evidence. Patent oppositions will now be classed as "substantive" or "procedural". A substantive opposition is one in which the validity, or extension of term of a standard patent application or innovation patent is challenged. A Notice of Opposition must still be filed three months from the date of advertisement of acceptance of the patent application and an opponent will then still have three months to file a statement of grounds and particulars. However, under the new provisions the statement must also be accompanied by a copy of any non-patent documents relied on by the opponent. The timeline will also still include three months for filing evidence in support and evidence in answer. However, it is important to note that the initial timeline for filing evidence in reply has been shortened to two months.

Further, a more rigorous test for the grant of an extension of time will apply. Under the new regulations, the party requesting an extension of time will need to satisfy the Commissioner that "it has made all reasonable efforts to comply with all the relevant requirements" and "despite acting promptly and diligently at all times" is unable to file evidence within the relevant period. Alternatively, "exceptional circumstances" must exist to warrant the extension of time. Importantly, no mechanism is to be provided to request leave to submit further evidence outside the standard rounds of evidence. The opponent will be required to file summaries of submissions 10 days prior to the hearing and the applicant will be required to do the same within 5 days. Further, in a significant departure from the present procedure, under the new provisions it will no longer be possible to file a divisional application during opposition proceedings.

A procedural opposition relates to extensions of time, amendments, and the grant of a license. A Notice of Opposition will have to be filed two months from the date of advertisement of the relevant act. A statement of grounds and particulars must be filed within one month of the Notice of Opposition and it must be accompanied by any non-patent documents relied upon. The Commissioner has been given broad discretion to"decide the practice and procedure to be followed in a procedural opposition". It is anticipated that such oppositions will generally be dealt with on the basis of written submissions.

Considered by some to be a controversial move, the new standards will apply to all pending oppositions currently before the Patent Office as well as new oppositions commenced after 15 April 2013. This may significantly disadvantage some of the parties involved in ongoing opposition proceedings. For example, one party may have the benefit of preparing evidence in support under the existing provisions while the other party may then be subject to the new, stricter regulations when preparing evidence in answer. However, IP Australia has expressly rejected stakeholders concerns that this could disadvantage a party involved in an ongoing opposition. It remains to be seen how the new regulations will be handled by the Patent Office in such proceedings.

Further, some also consider that the proposed regulations are too restrictive and the timelines unreasonably short. However, at this time, the exact wording of the regulations still needs to be evaluated to determine how the new procedures will operate for users of the patent system.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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