How to conduct an Australian patent procedural opposition

There are broadly two types of opposition available under the Australian patent system, namely a substantive opposition and a procedural opposition. A substantive opposition is used to challenge the validity of a patent application pre-grant, certification of an innovation patent and a patent term extension. By contrast, a procedural opposition is used to challenge, for example, the allowance of amended claims post-acceptance.

Given the inherent nature of a substantive opposition, the prosecution time frame and complexity is substantial. On the other hand, procedural oppositions are relatively shorter in duration and less complex given the usually narrow range of issues to be canvassed.

What is a procedural opposition?

There are three sections of the Australian Patents Act 1990 (the Act) that relate to procedural oppositions:

1. an amendment under section 104 to a patent request, specification or other filed document - “Opposition to a request to amend a filed document“
2. an extension of time under section 223 for performing an action in relation to a patent, patent application, or any proceedings under the Act that is required to be done, but was not done, within a certain time - “Opposition to an extension of time”
3. grant of a licence under regulation 22.21(5) - “Opposition to grant of a licence”.

Whilst there is a degree of overlap in the conduct of each of these procedural oppositions, each is outlined in turn.

1. Opposition to a request to amend a filed document

In effect, any person may oppose the Commissioner allowing an amendment to a patent request, specification or any other filed document. Usually the opponent will be a person affected by the amendment. For example, a claim amendment that results in a person arguably becoming an infringer of that claim. This opposition process affords a person an opportunity to persuade the Commissioner that an amendment should not be made.

Basis for opposition

The grounds of opposition are constrained to non-compliance with section 102 or reg. 10.3 of the Act. It is important to note that under this process, the validity of a proposed amended claim cannot be subjected to an assessment in light of the prior art.

Section 102 prescribes that, at any time, an amended specification that discloses or claims subject matter beyond that at filing is not allowable and, after acceptance of a complete specification or certification of an innovation patent, claim broadening or non-compliance with section 40(2), (3), (3A) is not allowable. These sections are in the following terms:

(2) (a) [a complete specification must] disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;

(aa) disclose the best method known to the applicant of performing the invention;

(b) where it relates to an application for a standard patent - end with a claim or claims defining the invention;

(c) where it relates to an application for an innovation patent end with at least one and no more than five claims defining the invention.

(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

(3A) The claim or claims must not rely on references to descriptions, drawings, graphics or photographs unless absolutely necessary to define the invention.

Allowance of amendment - the trigger for opposition

When the Commissioner decides on the allowance of an amendment, it is advertised for a period of two months. Within this time frame, a notice of opposition may be filed. If the opposition is not timely lodged, an extension of time may be possible as explained in our article Extensions of Time for Australian Patents in Non-Pandemic Times.

Practice and procedure overview

In contrast to the substantive opposition process (where evidentiary time limits are strictly governed by the Act), for procedural oppositions, reg. 5.12 allows the Commissioner to decide the practice and procedure to be followed on a case by case basis. This is done by way of directions to the parties. Within one month of the filing of a notice of opposition, the opponent must file a statement of grounds and particulars (case summary) together with copies of any documents relied upon.

Since evidence is often not required in procedural oppositions, the Commissioner will request the parties to indicate if evidence is to be filed along with the time frame to prepare and file the evidence. A direction will then issue setting the time frames of evidentiary steps (if any).

Once the evidentiary steps have been completed, the parties may request an oral hearing or that the matter be decided by written submissions. In any event, the Commissioner will issue a direction as to how the matter is to proceed, including timing.

If an opposition is not withdrawn prior to a hearing or written submissions, a written decision will issue on the matter, including a decision on costs. An appeal lies to the Federal Court of Australia.

2. Opposition to an extension of time

In effect any person may oppose the Commissioner allowing an extension of time. Usually the opponent will be a person affected by the grant of an extension. For example, restoration of a patent that results in the person arguably becoming an infringer of that patent. This opposition process affords a person an opportunity to persuade the Commissioner that an extension of time should not be granted.

Basis for Opposition

An opposition may only be on the ground that the application for the extension does not satisfy the requirements of sections 223(2) or 223(2A). These sections are in the following terms:

(2) Where, because of:

(a) an error or omission by the person concerned or by his or her agent or attorney; or

(b) circumstances beyond the control of the person concerned;

a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

(2A) If:

(a) a relevant act that is required to be done within a certain time is not done within that time; and

(b) the Commissioner is satisfied, on the balance of probabilities, that the person concerned took due care, as required in the circumstances, to ensure the doing of the act within that time;

the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.

Allowance of an extension of time - the trigger for opposition

When the Commissioner decides on the allowance of an extension of time, it is advertised for a period of two months. Within this time frame, a notice of opposition may be filed. Further details on extensions of time are provided in our articles Extensions of Time for Australian Patents in Non-Pandemic Times and Restoration of Australian Patent Rights - a Generous Regime.

Practice and procedure overview

The considerations here are the same as for an opposition to a request to amend a filed document.

3. Opposition to grant of a licence

An applicant or patentee may oppose the Commissioner granting a licence to exploit an invention in the following circumstances only:

• section 41(4)(c) - the deposit requirements were not satisfied for a specification relating to a micro-organism
• an application was lapsed under section 148 (due to non-compliance with the Nuclear Non Proliferation (Safeguards) Act 1987)
• section 223(9) - a patent was lapsed or ceased because of the failure to do the relevant Act.

Basis for Opposition

In essence the only ground for opposition is that the licence requestor did not exploit or take definite steps by way of contract or otherwise to exploit the invention, the subject of the relevant patent/application. See our article on the application of section 223(9) circumstances in How to Obtain a Patent Licence from the Australian Patent Office.

Receiving a request for a licence - the trigger for opposition

When the Commissioner receives a request for a licence, a copy of the request must be provided to the person concerned (usually the applicant or patentee). Within two months of the receipt of the request, a notice of opposition may be filed.

Practice and procedure overview

Again, the considerations here are much the same as for an opposition to a request to amend a filed document.

In summary - procedural oppositions

Whilst procedural oppositions by their very nature are somewhat more streamlined compared to a substantive opposition, it is important to note the shorter two month time frame for commencing an opposition, as well as the constrained grounds and shorter evidentiary periods. There can be pitfalls for the unwary and so experienced guidance should always be sought.