Australian standard patent opposition procedure

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Australia operates a pre-grant patent opposition system for standard patents. When a patent application is accepted for grant by IP Australia, it is advertised as accepted (published in the Official Journal) and prospective opponents have three months from the published acceptance date to file a Notice of Opposition.

The Notice of Opposition provides no substantive argument and simply registers that an opposition has been filed by payment of fee and identification of the opponent. The opponent must then file a Statement of Grounds and Particulars (SOGAP) within three months from when the Notice of Opposition was filed, along with a copy of each document mentioned in the statement.

The filing of the SOGAP results in the instigation of the evidentiary phase of an Australian patent opposition. The evidentiary phase will require expert evidence from a person skilled in the art and, preferably, a person skilled in the art in Australia.

Firstly, within three months from the filing of the SOGAP, the opponent must file Evidence in Support (EIS) of the opposition. Secondly, within three months of the filing of the EIS, the applicant must file Evidence in Answer (EIA) to the opposition and, finally, the opponent has an opportunity, within two months of the filing of the EIA, to file Evidence in Reply (EIR), which is to be directed towards matters brought up in the EIA.

There is the ability to request extensions of time to the filing of evidence, but the person requesting the extension of time must satisfy IP Australia that:

  • they have made all reasonable efforts to comply with all relevant filing requirements and, despite acting promptly and diligently at all times, are unable to do so; or
  • there are exceptional circumstances that warrant the extension [1].

Once all the evidence has been filed, IP Australia will, typically, have an oral hearing, although it is also possible to have a hearing based on the written submissions. The opponent is required to file a summary of submissions at least ten business days before the hearing and the applicant must file a summary of submissions at least five business days before the hearing [2].

The hearing is held by a Hearing Officer at IP Australia and provides an opportunity for both sides to make their case and for the Hearing Officer to ask pertinent questions.

Once the hearing has been held, the Hearing Officer will, typically, issue a decision within a month or two. The decision is appealable to the Federal Court.