It often happens that a party will attempt to introduce more evidence in the form of some kind of documentation outside of the time provided by the Act or Regulations and for which an extension of time is not available.

Oppositions commenced before 15 April 2013

Where an opposition commenced before 15 April 2013, a party seeking to adduce evidence outside the evidentiary timeframes may seek leave to file it as further evidence under reg 5.10(4) as in force immediately before 15 April 2013 (see 7.5.3.1 Further Evidence).

A party to the proceedings cannot rely on reg 5.11 as in force before 15 April 2013 to have the Commissioner treat such material as part of the inter partes opposition. The Commissioner will not use this reg 5.11 to allow a party to bypass the times for filing evidence set out in reg 5.8 as in force before 15 April 2013, nor the requirements for filing further evidence provided by reg 5.10(4) as in force before 15 April 2013 (Leonardis v St Alban [1992] APO 38).

Oppositions commenced on or after 15 April 2013

There are no provisions for further evidence in an opposition commenced on or after 15 April 2013. However, reg 5.23 provides the Commissioner with the discretion to inform her or himself of a fact by reference to a document.

Regulation 5.23 is as follows:

Regulation 5.23 Commissioner may consult documents

For the purposes of deciding an opposition, the Commissioner may consult a document that:
1. is relevant to the opposition; and
2. has not been filed under this Chapter [Chapter 5 Oppositions]; and
3. is available at the Patents Office.
If the Commissioner proposes to rely on the document, the Commissioner must give to the parties:
1. notice of the Commissioner’s intention to do so; and
2. a copy of, or access to, the document; and
3. an opportunity to give evidence or make representations about the document.

A party should not rely on further information in a document to avoid the evidentiary time frames prescribed by the regulations. While a party may file further information in the form of a document at any stage during the opposition proceedings for consideration by the Commissioner under reg 5.23, the power conferred by reg 5.23 is discretionary; the parties do not have a right to urge the Commissioner to make use of this power.

A document filed as further information during opposition proceedings, or a document filed with the evidence in reply that is not strictly in reply, is not evidence in the opposition. Where a document is filed, the Commissioner will exercise the discretion to determine the most appropriate course of action based on considerations such as the relevance of the information to the grounds of opposition and the stage at which the document is filed in the opposition process. Possible outcomes include that:

the document may be admitted into the opposition proceedings for consideration with the benefit of submissions and/or evidence by the parties; or
the document may be excluded from the opposition, but form the basis for re-examination of the specification under section 97 or section 101G once the opposition is concluded; or
the document may be excluded from the opposition, and the Commissioner may take no further action in respect of the document.

Where the Commissioner admits a document into the opposition, the Commissioner will proceed in accordance with reg 5.23(2).

Note: If documents mentioned in or filed with the statement of grounds and particulars are not filed with the evidence in support, or included by way of a direction made by the Commissioner, either by request or on her own initiative, the only means for such documents to be considered in the opposition is under reg 5.23.

Implications of further information on costs in the opposition

A document filed as further information during opposition proceedings, or a document not strictly in reply, is not evidence in the opposition. Therefore, where an opposition succeeds based on such material rather than the opponent’s evidence in support this will, where appropriate, be reflected in the award of costs (see, for example, Intervet International B.V. v E. I. du Pont de Nemours and Company [2017] APO 31).