The provisions of reg 22.22 do not apply to amendments to opposition documents (reg 5.13). Consequently, a party does not have a right to be heard independently of the express provisions of regs 5.14 and 5.15.

Amending a Notice of Opposition

Note: This information applies to oppositions commenced before, on or after 15 April 2013 as specified.

An opponent may request the Commissioner in writing to amend its notice of opposition to:

correct a clerical error or obvious mistake (reg 5.14, or reg 5.3A as in force immediately before 15 April 2013), or
change the name of the opponent where the opponent’s right or interest in an opposition is transferred to another person (reg 5.15, or reg 5.3B as in force immediately before 15 April 2013).

There are no legislative provisions allowing a request to be made for any other type of amendment to the notice.

On receipt of a request to amend the notice of opposition, the applicant or patentee will be notified of the opponent’s request, and the parties will be given an opportunity to make representations about the proposed amendment. The fee for making a formal representation objecting to a proposed amendment (i.e. leading to a hearing on the proposed amendment) can be found at Schedule 7, item 219. No fee is payable for merely making representations to the Commissioner expressing a viewpoint on the proposed amendment, where the representations do not comprise a formal objection to the proposed amendment.

The parties will be notified of the delegate’s decision in the matter as soon as practicable. If the amendment is allowed, the applicant or patentee will be given a copy of the amended notice of opposition.

Where the amendment to the notice is to change the name of the opponent, the opposition officer will ensure that the opposition proceeds in the name of the new opponent.

Amending a Statement of Grounds and Particulars

Note: This information applies to oppositions commenced before, on or after 15 April 2013, as specified.

Under reg 5.16, or reg 5.9 as in force immediately before 15 April 2013, an opponent may request the Commissioner in writing to amend its statement of grounds and particulars to:

correct an error or omission in the grounds of opposition;
to update the grounds of opposition to reflect an amendment to the patent request or complete specification to which the statement relates; or
to amend the facts and circumstances (the particulars) forming the basis for the grounds.

On receipt of the request, the applicant or patentee will be notified of the opponent’s request and the parties will be given an opportunity to make representations about the amendment. The fee for making a formal representation objecting to a proposed amendment (i.e. leading to a hearing on the proposed amendment) can be found at Schedule 7, item 219. No fee is payable for merely making representations to the Commissioner expressing a viewpoint on the proposed amendment, where the representations do not comprise a formal objection to the proposed amendment.

The statement of grounds and particulars must not be amended where:

an application for dismissal of an opposition is being considered (reg 5.16(3)(a)); or
the application has been opposed under section 59 and the opposed specification is being re-examined, and re-examination is not completed as required by reg 9.5 (reg 5.16(3)(b)).

In all other circumstances, the amendment will be made providing the delegate is satisfied that it is appropriate to do so.

Relevant factors to be taken into account in determining whether it is appropriate to make the amendment were considered in CSL Limited v Isconova AB et al [2016] APO 82, and include:

the prospect of undue prejudice to a party – for example, the applicant may be unduly prejudiced by unnecessary delays in seeking amendment, or by the introduction of further particulars that change the case the applicant has to answer (see Diamond Scientific Company v CSL Limited [1992] APO 55);
the timing of the amendment request and the reasonableness of the explanation of the delay;
the public interest – noting that a correct determination of the opposition is one based on the issues properly raised in the opposition proceedings.

The parties will be notified of the delegate’s decision in the matter as soon as practicable and, if the amendment is to be made, must give the applicant a copy of the amended statement.