Patent Opposition

 

A Notice of Opposition must be filed within three months of the date when the Patent Office advertises acceptance of the application.  FB Rice can prepare and file a Notice of Opposition on a client's behalf.

 

 

Within three months of filing a Notice of Opposition, it is necessary for the opponent to serve a Statement of Grounds and Particulars on the applicant for the patent. The Statement is intended to give the applicant fair notice of the case to be met, and to define the issues of the opposition; it is binding on the opponent, and the opponent's case will be confined to the issues raised in the Statement, unless it is subsequently amended. Amendment of the grounds of the Statement is possible only in very limited circumstances. Amendment of the particulars may be made at any time during the opposition proceedings, although the Commissioner has the discretion to impose terms or conditions on allowance of the amendment.

 

In general the Statement of Grounds and Particulars will be in summary form, and should be as brief as the nature of the opposition permits. Each ground should have at least one particular, for example the documents relied upon. If there are no particulars, that ground is likely to be dismissed.

 

The Commissioner may re-examine the complete specification. Re-examination would presumably be based on the information set out in the Statement of Grounds and Particulars.

 

 

Evidence-in-Support should be served on the applicant within three months from the date of service of the Statement of Grounds and Particulars.

All the evidence must be in the form of a Declaration(s). The Evidence-in-Support normally includes an analysis of the scope of the claims as accepted, and a detailed discussion of each ground of opposition relied upon, including how the prior art documents relate to the claims; copies of each of these documents are exhibited to the Declaration. At least one Declaration by an Australian expert is usually included to attest to the state of common general knowledge in the art in Australia at the priority date. Evidence of the date of publication of each of the prior art documents is provided in a separate Declaration, often by the patent attorney handling the case.

 

 

Following service of Evidence-in-Support, the applicant has three months to serve Evidence-in-Answer, answering the opponent's case.

The opponent may serve Evidence-in-Reply within two months from the date of service of the Evidence-in-Answer. Evidence-in-Reply should specifically reply to the Evidence-in-Answer and not contain any new evidence, which may only be introduced with special leave from the Commissioner. Such leave is usually granted only if the new evidence could not have formed part of the Evidence-in-Support.

 

 

Extensions of the deadlines to serve evidence may be available, but the Patent Office is strict in monitoring the progress of oppositions. The regulations provide that the Patent Office may initiate a directions hearing where it considers there has been excessive delay in the opposition, and that in the public interest the matter should be expedited. Similarly, either party may object to an extension being granted to the other party. If any extension of time is sought, it is necessary to indicate the progress that has been made towards completion of the evidence, and to show that any delay has been unintentional. For these reasons it is crucial to begin seriously researching the case and identifying witnesses as soon as the decision has been taken to oppose.

 

 

After the evidentiary steps have been completed, the opposition is heard before a delegate of the Commissioner (normally a Senior Examiner from the relevant Examining Unit). Attendance at the hearing is not compulsory but is recommended, and each party may choose to be represented by its patent attorney, or by Counsel (in which case it is desirable to settle the evidence with the Counsel). Although it is possible to call witnesses, or to subpoena witnesses or evidence from the other side, this is rarely, if ever, done; indeed, it may prove counterproductive, as Hearing Officers do not have experience in assessing oral evidence or cross-examination.

 

The Hearing Officer usually takes several months to decide the opposition, and then provides the parties a copy of the decision with detailed reasons. The decision may be appealed to the Federal Court.

 

To find out more about patent opposition in Australia, click here to download our fact sheet. Click here for infomation about patent opposition in New Zealand.