7.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)

Also in this Section:

• 7.2.1 Oppositions to grant of a standard patent-Section 59 oppositions
• 7.2.2 Opposition to Innovation Patents-Section 101M Oppositions
• 7.2.3 Oppositions to an Extension of Term of a Pharmaceutical Patent (Section 75(1) Oppositions)
• 7.2.4 Oppositions to Request to Amend an Application or Other Filed Document (Section 104(4) Oppositions)​​​​​​​
• 7.2.6 Oppositions to Grant of a Licence (Regulation 22.21(4) Oppositions)
• 7.2.7 Disputes Between Applicants and Co-Owners (Directions Under Section17 and Determinations Under Section 32)
• 7.2.8 Entitlement Disputes (Applications Under Sections 33-36 and 191A)

Sub-chapters in this Section:

• 7.2.5.1 Commencing the Opposition - Filing a Notice of Opposition
• 7.2.5.2 Filing the Statement of Grounds and Particulars
• 7.2.5.3 Evidence and Evidentiary Periods
• 7.2.5.4 Finalising the Opposition​​​​​​​

Key Legislation:​​​​​​​

Patents Act:

• s223 Extensions of time
• s224 Review of decisions

Patents Regulations:

• reg 22.8 Costs
• reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

Note: This information applies to oppositions commenced on or after 15 April 2013.

In this topic:

Relevant Legislation

The Act

The Regulations

Overview

Relevant Legislation

The Act

The Regulations

Overview

Under section 223(6) of the Patents Act 1990, a person may, in accordance with the regulations, oppose the grant of an extension of time to do a relevant act under subsections 223(2) or 223(2A).

Extensions of time under subsections 223(2) or 223(2A) can only be opposed where the Commissioner is required to advertise the extension request in the Official Journal of Patents under reg 223(4), because:

• the period of the extension is more than 3 months; or
• the requested extension is for paying a continuation or renewal fee outside the “grace period” prescribed by the regulations.

Where the Commissioner is satisfied, on the balance of probabilities, that the extension would not be granted even in the absence of an opposition, the application will be refused (section 223(6A)).  In this situation, the extension will not be advertised and cannot be opposed (reg 223(6A)).  This provision saves a potential opponent from going to the expense of filing an opposition to the grant of an application that the Commissioner does not intend to grant.

In general, an opposition to an extension of time to do a relevant act will be filed by a person (the “opponent”) who will be in some way affected by the consequences of the extension.  For example, a lapsed patent may be restored if the patentee is provided with an extension of time to pay a renewal fee.  The opposition process provides the opponent with the opportunity to make out a case to persuade the Commissioner that the extension should not be granted.

An opposition under section 223(6) commences when a person files a notice of opposition in the approved form within the period allowed by the regulations, and pays the appropriate fee.  Subsequently, the opponent files a statement of grounds and particulars, setting out the grounds upon which the extension of time is opposed and the facts and circumstances supporting the grounds.  Where appropriate, the parties will be provided with periods for filing evidence to establish their respective cases, after which the Commissioner will hear and decide the matter.

The procedures involved in this process are explained more fully in the following sections.