7.2.1.3 Evidence and Evidentiary Periods
Key Legislation:
Patents Act:
- s49 Acceptance of standard patents
- s59 Opposition to grant of standard patent
- s104 Amendments by applicants and patentees
- s223 Extensions of time
Patents Regulations:
- reg 5.5 Statement of grounds and particulars--standard patent opposition
- reg 5.7 Filing of evidence
- reg 5.8 Evidentiary periods
- reg 5.9 Extension of time for filing evidence
- reg 5.10 Notice of opposition
- reg 5.22 Commissioner may give directions
- reg 23.36 Amendments made by
- Schedule 7 Fees (items 216 and 218)
Note: The statement of grounds and particulars and accompanying documents, the evidence in an opposition and the summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner.
General information
For oppositions commenced on or after 15 April 2013, the procedures for filing evidence and the evidentiary periods in a substantive opposition are governed by regs 5.7 and 5.8, respectively.
For information on evidence in general see 7.5 Evidence.
Filing evidence
Physical evidence
Physical evidence should not be filed. Rather, the documentary evidence should include a description of the physical item including, as appropriate, a photograph or video recording as well as an indication of the place at which the item may be inspected.
The Commissioner may subsequently order inspection of the item or direct that it be filed, as the Commissioner determines to be appropriate.
Initial processing of evidence
A party seeking to rely on evidence in an opposition under section 59 must file the evidence with the Commissioner within the evidentiary periods indicated below. If a party files all of the evidence before the end of an evidentiary period, the party must inform the Commissioner of this fact.
When evidence is filed, it will be given to the other party and the opposition officer will acknowledge receipt to the parties. Unless the evidence is clearly stated to be “part evidence”, the opposition officer will confirm that all the evidence for the evidentiary period has been filed.
Where evidence is filed early, the other party will be given the evidence before the end of the evidentiary period. Otherwise, the evidence will be given to the other party as soon as practicable after the relevant evidentiary period ends. Where no evidence was filed, the other party will be notified accordingly.
Where appropriate, the opposition officer will advise the parties that the next evidentiary stage has commenced.
The times for filing evidence (the evidentiary periods) are as follows:
Note: The provisions of reg 5.5(2), that documents mentioned in the statement of grounds and particulars must be filed with the statement, does not replace the need for documents to be adduced in evidence. All documents that the opponent intends to rely on to establish the grounds of opposition must be filed with the evidence in support. However, it is the current practice of the Commissioner when acknowledging the filing of the Notice of Opposition to inform the parties that she intends to direct that any documents accompanying the statement of grounds and particulars will be treated as evidence in support of the opposition. That direction is then made when the Commissioner acknowledges that the statement has been filed. Alternatively, the Commissioner may, if requested, direct that any documents filed together with the statement of grounds and particulars be treated as evidence in support.
Evidence in answer
If the opponent files evidence in support of the opposition, the applicant must file any evidence in answer to the evidence in support within 3 months from the day they are given a copy of the evidence and notified that all the evidence in support has been filed.
Where the opponent does not file any evidence in support, the applicant must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the opposition officer notifies the applicant that no evidence in support was filed.
Evidence in reply
If the applicant files evidence in answer, the opponent must file any evidence in reply to the evidence in answer, within 2 months from the day the Commissioner gives a copy of the evidence in answer to the opponent and notifies the parties that all the evidence in answer has been filed.
Extending an evidentiary period
Under reg 5.9, the Commissioner may extend the time for filing evidence in an opposition, either on request of a party in writing, or on the Commissioner’s own initiative.
An extension of time to file evidence under reg 5.9 will only be available where the party making the request can establish that:
- the party seeking the extension has made all reasonable efforts to comply with all relevant filing requirements, and has been unable to file their evidence despite acting promptly and diligently to ensure it is filed in time; or
- there are exceptional circumstances that warrant the extension.
Where an extension of time to file evidence is refused, the requesting party will not be allowed a short extension to file evidence that is immediately available, or to validate evidence that has already been filed out of time.
For more information and the bases upon which an evidentiary period can be extended see 7.11 Extensions of Time and Restoration of the Right of Priority.
Extensions of time in a substantive opposition are not available by direction
The Commissioner cannot make a direction under reg 5.22 to extend an evidentiary period in a substantive opposition.
However, where there is another proceeding or action in relation to an opposed application (e.g. amendments to the specification under section 104), it may be appropriate to stay the opposition until the other matter is finalised (see 7.3.1 Directions in Opposition Proceedings). A stay is an exceptional circumstance, and can form the basis for an extension of time.
Evidence filed out of time (Regulation 5.23)
There are no provisions for the formal filing of evidence outside of the periods discussed above. However, reg 5.23 is not available for the Commissioner to use his or her discretion to consult documents that are relevant to the opposition, have not yet been filed and are available to the Patent Office. If the Commissioner proposes to rely on such documents, the Commissioner must give the parties notice of the Commissioner's intention to do so, provide the parties with copies of the documents, and an opportunity to give evidence or make representations about the documents.
For more information on further evidence and extensions of time to file evidence responding to the further evidence, see 7.5 Evidence.