Patent & Trade Mark

Staying opposition proceedings pending the outcome of court action?

Date: 05 February 2008
Author: David Lee
Disputes between two parties in patent related matters may involve concurrent actions before the Patent Office and before the courts. In addition to these formal proceedings, the parties may also be involved in direct negotiations with the actions before the Patent Office and in court forming part of a broader strategy.
In such multipronged disputes, there might be an advantage to one of the parties in delaying the proceedings in one action pending the outcome of the proceedings in the other action or in the negotiations. For example, arguments and evidence to be filed during an opposition may forewarn the other party of the strategy to be pursued during the court action. In addition, if the opposition has been filed for strategic advantage to gain leverage in negotiations, keeping the opposition pending during the Court action may strengthen the opponents position.
Under the Australian Patent Regulations (Patent Regulations 1991, Regulation 5.10), the Commissioner of Patents is given a broad discretion to make directions for the conduct of opposition proceedings.  This broad discretion includes the staying of oppositions pending the outcome of court action.
In a recent review of decisions by Delegates of the Commissioner of Patents on whether to stay opposition proceedings pending the outcome of pending and related court action, we noted that Delegates rarely found in favour of granting a stay.
In coming to their decisions, the Delegates gave consideration to a number of factors including the nature of the court action and its relevance to the issues being considered in the opposition, the competing interests of the parties involved, and the public interest in only having valid patents granted, in having the opposition resolved quickly and in the efficient operation of the opposition system.

Of these factors, the Delegates gave significant weight to the public interest.  Where there was a difference in the range or nature of the issues under consideration in the court case and those in the opposition (eg issues raised in the opposition were not raised with the court), the Delegates found in favour of the public interest to have the opposition proceed. Therefore, when preparing for an opposition in which a stay of proceedings is to be requested, careful consideration must be given to the grounds for the opposition. Generally, in an opposition, a comprehensive Statement of Grounds and Particulars detailing as many grounds as possible would be considered to be the most effective strategy. However, when a stay of proceedings is desirable, a comprehensive Statement of Grounds and Particulars which includes issues which are broader or different to those under consideration in the court action may undermine any attempt to obtain a stay by providing the Delegate with reasons to find in favour of the public interest and against the stay.

In a related observation, Extensions of Time to serve evidence in oppositions are very frequently granted by the Delegate of the Commissioner on the grounds of the public interest that all relevant evidence be considered in the opposition and that the opposition be settled on it merits.
Tags:  Oppositions, Australia
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