Situations may arise where a matter before the Commissioner is simultaneously before the courts. This can arise, for example, where a standard patent application is concurrently before the court for an appeal from a decision in a procedural opposition to the allowability of an amendment and the Commissioner for an opposition.

For administrative convenience, the Commissioner may decide to defer the hearing, pending the outcome of the court action if both parties agree to the deferral.

However, before deciding to defer, the Commissioner should be satisfied that:

the matters in dispute are simply between the parties and have no significant consequential effects on third parties; and
neither party would be significantly disadvantaged by deferring the hearing.

In some circumstances, to protect the public interest where a deferral is requested, the Commissioner may ask for an undertaking from the applicant or patentee not to sue for infringement. The terms of the undertaking will be published in the Official Journal.

Where one party objects to the matter being deferred, the Commissioner will consider a range of factors before deciding whether or not to defer including:

whether the court action will likely be resolved in the time frame envisaged by the Commissioner;
whether all the issues before the Commissioner will be resolved by the court action;
whether the evidence before the Commissioner is similar to that before the court; or
whether, given the nature of the case, there is a clear public disadvantage to one of the parties or the public interest; the Commissioner has a duty to act in a way that leads to minimal prejudice to the respective parties (see Yamazaki Mazak Corporation v Ors 24 IPR 321, (1992) AIPC 90-879 which discusses prejudice to the applicant and Ferocem v Hightech Auto Tools (1994) 29 IPR 144 which discusses prejudice to the opponent).

Note: If the Commissioner issues a direction in the belief that a court action will be resolved in a particular time frame and this court action is subsequently delayed, the Commissioner will reconsider whether the direction is appropriate.

If the Commissioner considers that deferral is inappropriate and proceeds with hearing the matter, then the Commissioner must:

not purport to be 'reviewing' a decision of a court; and
recognise that the case being heard may be different to that argued before the court. Even if the evidence before the Commissioner is the same as the evidence filed in the court action, the court proceedings may have been argued on only some of that evidence. Furthermore, the material before the Commissioner may include material not before the court.

The question of whether it is lawful to suspend opposition proceedings until a court hands down its judgement was considered in Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126. In this case the judge held that a decision by the Registrar to suspend proceedings could not stand, as to delay opposition proceedings for an indeterminate period amounted to a refusal by the delegate to hear those proceedings, and the delegate was intending to give too much significance to findings of fact made by the Federal Court.