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.

There are no provisions for further evidence in an opposition. 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 5.2.3 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.

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 or part of a document filed with the evidence in reply that is not strictly in reply, is not evidence in the opposition and a party should not rely on further information in a document to avoid the evidentiary time frames prescribed by the regulations. 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).

The decision in Reflex Instruments v Minnovare [2017] APO 8 outlines factors relevant to the Commissioner’s discretion under reg 5.23, drawing comparison to matching principles under the Trade Marks Regulations (1995) (see Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42 and Retimans (Canada) Ltd v Hachette Filipacchi Presse [2016] ATMO 54).These factors include:

The circumstances leading up to the evidence not being filed earlier
What the evidence shows
Whether the information is likely to be crucial to the delegate’s decision?
The public interest in have the information considered
The balance of convenience and interests of the parties if the information is considered

Regarding the practicalities of the exercise of powers under Regulation 5.23 it is noted that:

The regulation provides a mechanism for the parties to file evidence should the application be significantly amended prior to the hearing.
Since the Commissioner is consulting a document, there is no requirement to amend the statement of grounds and particulars.
The process can be delegate-led if there is a document that the delegate is aware of.
In addition to being a means for consideration of evidence not properly in reply, it is a means for considering evidence filed out of time in the case that an extension of time to file evidence (for example under reg 5.9) has been unsuccessful.
Depending on the circumstances, and the stage of the opposition in particular, the Commissioner may determine a request under Reg 5.23 either on an interlocutory basis or as part of hearing and deciding the substantive opposition.

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.

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 his or 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).