7.2.8.2 Finalising the Request

Also in this Chapter:

• 7.2.8.1 Procedure - Requests for the Commissioner to Make a Determination of Entitlement
• ​​​​​​​7.2.8.3 Remedies Where Declaration Made
• 7.2.8.4 Patent Applications under Sections 33 to 36
• 7.2.8.5 Relevant Cases

Key Legislation:

Patents Act:

• s35 Applications by eligible persons following revocation by Commissioner  
• s36 Other applications by eligible persons  
• s191A Commissioner's power to rectify register  

Patents Regulations:

• reg 22.23 Written submissions and oral hearings
• reg 22.24 Practice and procedure other than for opposition proceedings

Related Chapters:

•  7.8 Hearings and Decisions

Note: This information applies to requests filed on or after 15 April 2013.

In this topic:

Nature of the hearing

Oral hearings

Hearings by written submissions

The decision

Appeal of a decision​​​​​​​

Where an entitlement matter is contested it is usual for the parties to be given the opportunity to be heard once any evidentiary stages are complete.  When uncontested, the requestor may also request or be offered the opportunity to be heard.  

The function of a hearing is to enable the parties to fully present their views supported by reasons and evidence (as required), in order that the hearing officer is in a position to make a correct and just decision.  The procedure for the hearing and decision is determined by the Commissioner in accordance with reg 22.24 taking into account reg 22.23.

Nature of the hearing

The hearing may be held orally or by written submissions at the Commissioner’s discretion (reg 22.24).  

Oral hearings

Where the Commissioner decides on an oral hearing, under reg 22.23, the parties will be notified of the date, time and place of the hearing.  A party may appear in person, or by telephone, or other means of telecommunication that the Commissioner reasonably allows.

The procedure to be followed for written submissions in an oral hearing will be set by direction under reg 22.23(5), at the Commissioner’s discretion.

The Commissioner requires parties to file a summary of their submissions prior to the hearing. Where both parties appear, the requestor must file the summary at least 10 business days before the hearing, and the respondent at least 5 business days before the hearing.

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

If only one party appears then their summary of submissions must be filed at least 5 business days before the hearing.

Where applicable, if a party fails to file a summary of submissions within the time set by the regulations, the hearing officer will consider this in making an award of costs in the matter.

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

Hearings by written submissions

Where an opposition is set for hearing by written submissions, under reg 22.23(1), the parties will be notified of the period in which the submissions must be filed.  The hearing officer will determine the matter after considering the written submissions.   

For more information on hearings by written submissions, see 7.8 Hearings and Decisions.

The decision

Once the matter is decided, the requestor and any other parties will be notified of the decision.  This may be the making of a declaration of entitlement and any necessary direction (see 7.2.8.3 Remedies Where Declaration Made) or that a declaration and/or direction should not be made. For further information on decisions see 7.8 Hearings and Decisions.

The decision will usually include an award of costs. For further information see 7.9 Costs.

Appeal of a decision

A decision under sections 35, 36 or 191A may be appealed to the Federal Court under subsections 35(3), 36(5) and 191A(6), respectively.