reg 5.5 Statement of grounds and particulars--standard patent opposition
reg 5.6 Notice of opposition and statement of grounds and particulars--section 101M opposition
reg 5.15 Notice of opposition--change of opponent
reg 5.12 Practice and procedure
reg 5.19 Hearing and decision--re-examination
reg 5.20 Hearing and decision--other circumstances
reg 5.26 Withdrawal of opposition
reg 9.5 Completion of re-examination
reg 23.36 Amendments made by Raising the Bar Act
Schedule 7 Fees (item 230)

Related Chapters:

Note: Unless explicitly stated otherwise, the information in this part applies to:

(i) oppositions commenced on or after 15 April 2013; and
(ii) oppositions commenced before 15 April 2013 in which the Commissioner has not set a hearing date or issued a notice of hearing to the parties before 15 April 2013, or re-examined the complete specification under section 97(1).

Pursuant to reg 23.36(2), for oppositions referred to in (ii), a reference in reg 5.20 (as in force from 15 April 2012) to regs 5.26, 5.19 or Part 5.4 should be read, respectively, as regs 5.15, 5.6 or 5.5 as in force immediately before 15 April 2013. Regulation 5.12 as in force before 15 April 2013 is taken not to apply.

Overview

Providing the opposition has not been withdrawn or dismissed, the next step in the opposition process is a hearing of the matter, after which a decision is issued. The function of the hearing is to enable the parties to fully present their views supported by reasons and evidence, in order that the hearing officer is in a position to make a correct and just decision.

Where an opposition has not been set for hearing prior to 15 April 2013, and no re-examination has taken place, the hearing and decision are governed by reg 5.20, subject to the transitional reg 23.36(2) where appropriate. Regulation 5.19 applies to the hearing and decision in oppositions commenced on or after 15 April 2013 where re-examination under section 97(1) is complete.

An opposition will be set for hearing either on the request of a party or on the Commissioner’s own initiative. Once the hearing officer decides the opposition, the parties will be notified of the decision as soon as practicable.

For more information on hearings and decisions, see 7.9 Costs.

Timing and requirements for requesting a hearing of the opposition

After re-examination

Where an opposition commenced on or after 15 April 2013 and the complete specification is re-examined under section 97(1), the Commissioner may hear the opposition if the opponent requests a hearing less than 1 month after the date that re-examination is completed under reg 9.5 (reg 5.19(2)(b)). A request for a hearing must be filed in the approved form (available on the IP Australia website) and be accompanied by the appropriate fee (Schedule 7, item 230).

On receipt of a request, the opposition officer will give a copy to the applicant as soon as practicable.

In other circumstances

In other circumstances, providing the evidentiary periods have ended, and the opposition has not been withdrawn, dismissed or previously heard and decided, the opponent may request a hearing. The request must be made in the approved form (available on the IP Australia website) and be accompanied by the appropriate fee (Schedule 7, item 230).

On receipt of a request for a hearing, the opposition officer will give a copy to the applicant as soon as practicable.

Nature of the hearing

The hearing may be held orally or by written submissions at the Commissioner’s discretion (reg 5.20(3)).

Oral hearings

Where the Commissioner decides on an oral hearing, the opposition officer will notify the parties of the date, time and place of the hearing. For more information on the hearing process, see 7.8 Hearings and Decisions.

Regulation 5.20(4) requires both parties to file a summary of their submissions prior to the hearing. The opponent must file the summary at least 10 business days before the hearing, and the applicant at least 5 business days before the hearing.

Note: As of 15 April 2013, the summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner.

If a party fails to file a summary of submissions within the time prescribed by the regulations, under reg 5.20(6), the hearing officer will consider this in making an award of costs in the opposition.

On receipt of a summary of submissions, the opposition officer will give a copy of a party’s summary to the other party as soon as practicable.

Hearings by written submissions

Where an opposition is set for hearing by written submissions, the delegate will issue a direction to the parties specifying the process and time frame in which the written submissions are to be filed (see 7.3.1 Directions in Opposition Proceedings)

For more information on the hearing process, see 7.8 Hearings and Decisions.

The Decision

Once the opposition is decided, the parties will be notified of the decision as soon as practicable. For more information on decisions see 7.8 Hearings and Decisions.

The decision will usually include an award of costs in the opposition. For more information on costs see 7.9 Costs.

Appeal of a Decision

The hearing officer’s decision in an opposition under section 59 to grant of a patent may be appealed to the Federal Court under section 60(4).

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023

7.2.1.4 Finalising the Opposition

Also in this Chapter:

Key Legislation: