7.2.2 Section 101M - Opposition to an Innovation Patent

Also in this Chapter: 

• 7.2.1 Oppositions to grant of a standard patent-Section 59 oppositions
• 7.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent, 
• 7.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document, 
• 7.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)
• 7.2.6 Reg 22.21(4) - Opposition to Grant of a Licence

Sub-chapters:

• 7.2.2.1 Commencing the Opposition - Filing the Opposition Documents
• 7.2.2.2 Evidence and Evidentiary Periods
• 7.2.2.3 Finalising the Opposition

Key Legislation: 

Patents Act: 

• s18 Patentable inventions
• s33 Applications by opponents etc.
• s40 Specifications
• Chapter 9A Examination, re-examination and opposition – innovation patents
• s101M Opposition to innovation patent  
• ​​​​​​​s223 Extensions of time​​​​​​​

Patents Regulations: ​​​​​​​

• Chapter 5 Patent Regulations 1991 Oppositions 
• reg 22.8 Costs
• reg 23.36Transitional provisions 
• Schedule 7 Fees

Note: This information applies on or after 15 April 2013.

Overview

Under section 101M of the Patents Act 1990, the Minister or any other person may, in accordance with the regulations, oppose a certified innovation patent and seek revocation of it, on one or more of the following grounds of invalidity, but no others

a. that the patentee is either:

i. not entitled to the patent (section 33(3))

ii. entitled to the patent but only in conjunction with some other person (section 33(4));

b. that the complete specification does not comply with section 40(2), 40(3) or 40(3A);

c. that the invention is not a patentable invention because it does not comply with paragraph 18(1A)(a), (b) or (c);

d. that the invention is not a patentable invention under subsection 18(2) or (3).

An opposition to an innovation patent will generally be filed by a person (the “opponent”) who is in some way affected by the certified patent.  The opposition process provides the opponent with the opportunity to make out a case in order to persuade the Commissioner that the patent should be revoked.

An opposition under section 101M commences when a person files a notice of opposition, a statement of grounds and particulars and the evidence in support of the opposition, and pays the appropriate fee.  The parties are provided with periods for filing evidence in answer and reply, after which the Commissioner will hear and decide the matter.  

The procedures involved in this process are explained more fully in the following sections.