7.2.4.3 Evidence and Evidentiary Periods

Date Published

Key Legislation:

Patents Act:

  • s104 Amendments by applicants and patentees

Patents Regulations:

  • reg 5.4 Notice of opposition--standard patent opposition
  • reg 5.8 Evidentiary periods
  • reg 5.9 Extension of time for filing evidence
  • reg 5.10 Notice of opposition
  • reg 5.11 Statement of grounds and particulars
  • reg 5.12 Practice and procedure
  • reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

Note: Information is provided for oppositions commenced before, on or after 15 April 2013, as specified. 

Note: As of 15 April 2013, the statement of grounds and particulars and accompanying documents, the evidence in an opposition and the summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner.

General Information

For oppositions commenced before 15 April 2013, a party seeking to rely on evidence in an opposition under section 104(4) must file it with the Commissioner within the evidentiary periods prescribed by reg 5.8 as in force immediately before 15 April 2013, subject to reg 23.36(2).

For oppositions commenced on or after 15 April 2013, where a party wishes to file evidence the evidentiary periods will be set by direction under reg 5.12.

The process and procedure for filing evidence is summarised below.

Physical evidence

Physical evidence should not be filed.  Rather, the documentary evidence should include a description of the physical item including, as appropriate, a photograph or video recording as well as an indication of the place at which the item may be inspected.

The Commissioner may subsequently order inspection of the item or direct that it be filed, as the Commissioner determines to be appropriate.

For information on evidence in general see 7.5 Evidence.

Filing evidence in oppositions commenced before 15 April 2013

Note: Where an opposition commenced before 15 April 2013, and evidence is due to be served on a party on or after 15 April 2013, and the evidence has not been served before 15 April 2013, the evidence must be filed with the Commissioner on or before the due date for service and the opposition officer will give a copy of the evidence to the other party.  

Pursuant to reg 23.36(2), if the party is given the evidence after the date it is filed, the Commissioner will extend the subsequent evidentiary period by the number of days equal to the number of days between the filing date and the date the evidence was given to the other party.

In oppositions commenced prior to 15 April 2013, the evidentiary stages are governed by reg 5.8, as in force immediately before 15 April 2013, subject to reg 23.36(2) where appropriate.  

Note: Physical evidence should not be filed unless requested or directed by the Commissioner.

The evidentiary periods are as follows.  

Evidence in support

After 15 April 2013, the opponent must file any evidence in support of the opposition within 3 months after the day the opponent files (or before 15 April 2013 serves) the statement of grounds and particulars (reg 5.8(1) as in force immediately before 15 April 2013, subject to reg 23.36(2) item 4).

Evidence in answer

If the opponent files (or before 15 April 2013 serves) evidence in support of the opposition, the applicant or patentee must file any evidence in answer to the evidence in support within 3 months after being given (or being served with) the evidence in support.

Where the opponent does not provide any evidence in support, the applicant or patentee must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the evidence in support was due to be filed (or before 15 April 2013 served).

(Reg 5.8(2)-(3) as in force immediately before 15 April 2013 subject to reg 23.36(2) item 4)

Evidence in reply

If the applicant/patentee files (or before 15 April 2013 serves) evidence in answer, the opponent intending to rely on evidence in reply must, within 1 month of receiving the evidence, file:

  • evidence in reply to the evidence in answer; or
  • a copy of a notice of intention to serve evidence in reply.

If a notice of intention is filed, the opponent must file the evidence in reply within 3 months of being given (or, before 15 April 2013, being served with) the evidence in answer.

(Reg 5.8(4) as in force immediately before 15 April 2013 subject to reg 23.36(2) item 4)

Filing evidence in oppositions commenced on or after 15 April 2013

Evidence is not always required or relied on in a procedural opposition.  Therefore, for oppositions commenced on or after 15 April 2013, once the statement of grounds and particulars has been filed, the parties will be asked to indicate if they wish to file evidence.  

Note: The provisions of reg 5.11(2), that documents mentioned in the statement of grounds and particulars must be filed with the statement, does not mean the documents are in evidence.  However, it is the current practice of the Commissioner when acknowledging the filing of the Notice of Opposition to inform the parties that she intends to direct that any documents accompanying the statement of grounds and particulars will be treated as evidence in support of the opposition.  That direction is then made when the Commissioner acknowledges that the statement has been filed.  If no such direction has been made, then any documents accompanying the statement that the opponent intends to rely on to establish the grounds of opposition must be filed with the evidence in support.

A party intending to file evidence will be required to specify the nature and significance of the evidence, and how long they will need to prepare the evidence.

A delegate will consider the information, and propose a direction under reg 5.12. Where a direction is given for a party to file evidence, the other party will normally be provided with a period in which to file responding evidence. For more information on directions for evidence in a procedural opposition, see 7.3.1.4 Time for Filing Evidence in a Procedural Opposition.

When evidence is filed, the opposition officer will acknowledge receipt to the parties and give a copy of the evidence to the other party.

Extending the time for filing evidence

Opposition and evidentiary period before commenced 15 April 2013

A party may apply under reg 5.10(2) as in force immediately before 15 April 2013, for an extension of an evidentiary period that commenced prior to 15 April 2013.

See 7.11.3.2 Extensions under Reg 5.10(2)

Opposition commenced before 15 April 2013 and evidentiary period commenced on or after 5 April 2013

Pursuant to reg 23.36(2) item 2, reg 5.9 applies to extend an evidentiary period in this situation.

For more information see 7.11.2 Extensions of Time – Reg 5.9 and 7.3.1.4 Time for Filing Evidence in a Procedural Opposition

Opposition and evidentiary period commenced on or after 15 April 2013

In this situation, the Commissioner may extend an evidentiary period by direction under reg 5.12.

For more information see 7.3.1.4 Time for Filing Evidence in a Procedural Opposition

Further evidence

Further evidence is not available for oppositions commenced on or after 15 April 2013.

For oppositions commenced before 15 April 2013, a party may request leave to file further evidence under the provisions of reg 5.10(4) as in force immediately before 15 April 2013.

Any request for an extension of time to file further evidence or evidence responding to the further evidence, should be made under reg 5.10(2) as in force immediately before 15 April 2013. The request should be in the approved form (available on the IP Australia website) and be accompanied by the appropriate fee (Schedule 7, item 218 as in force before 15 April 2013).  

The request will be processed in accordance with reg 5.10(5) as in force immediately before 15 April 2013.

For more information on extensions of time under reg 5.10(2) as in force immediately before 15 April 2013 see 7.11.3.2 Extensions under Reg 5.10(2).