7.3.1.4 Time for Filing Evidence in a Procedural Opposition

Date Published

Key Legislation:

Patents Act:

  • s104 Amendments by applicants and patentees  
  • s223 Extensions of time  

Patents Regulations:

  • reg 5.8 Evidentiary periods
  • reg 5.9 Extension of time for filing evidence
  • reg 5.10 Notice of opposition
  • reg 5.12 Practice and procedure
  • reg 22.21 Protection or compensation of certain persons
  • reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

Note: Information is provided for oppositions under sections 104(4), 223(6) and reg 22.21(4) commenced before 15 April 2013 or on or after 15 April 2013, as specified.

 

Procedural oppositions commenced on or after 15 April 2013

In the case of procedural oppositions, evidence is not always required or relied on. Consequently, in procedural oppositions commenced on or after 15 April 2013, there are no set time periods for the filing of evidence. Once the statement of grounds and particulars has been filed, the parties will be asked to indicate if they wish to file evidence. If a party intends filing evidence, they must 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.

The setting of evidentiary periods by direction is a procedural ruling.  The procedure established must accord the parties natural justice, by allowing each of them to “have the opportunity to advance its case and to meet the case of [the other party]” (Somnomed Ltd v Commissioner [2006] FCA 765 at [23]).  However, provided natural justice is observed, the Commissioner can adopt any reasonable procedure.

Extending the time for filing evidence

Regulation 5.9 cannot be used to extend an evidentiary period in a procedural opposition where the opposition commenced on or after 15 April 2013. Instead, any extension must be done as a new direction under reg 5.12.

It would be inconsistent with the thrust of the Regulations for extensions of the evidentiary periods for procedural oppositions to be obtained on criteria less stringent than those applying to substantive oppositions.  Consequently, the criteria considered under reg 5.9 are relevant to any request for a direction under reg 5.12 that extends the time for filing evidence.

Where a procedural opposition has been stayed, the delegate will also extend the period for filing evidence.  The normal direction would be that:

The evidence is due to be filed <xx> months after the stay has ended.

 

 

Procedural oppositions commenced before 15 April 2013

For oppositions under sections 104(4), 223(6) and reg 22.21(4) commenced before 15 April 2013, the evidentiary periods are prescribed by reg 5.8 as in force immediately before 15 April 2013.  

For a summary, see:

Extending an evidentiary period commenced before 15 April 2013

Reg 5.10(2) as in force immediately before 15 April 2013 applies to extend an evidentiary period that commenced prior to 15 April 2013.

See 7.11.3 Extensions of Time - Reg 5.10.

Extending an evidentiary period commenced on or after 15 April 2013

Pursuant to reg 23.36(2) item 2, reg 5.9 applies to extend an evidentiary period in a procedural opposition provided that: 

i. the opposition commenced before 15 April 2103; and

ii. the evidentiary period commenced on or after 15 April 2013.

See 7.11.2 Extensions of Time - Reg 5.9.