Procedures for filing evidence in opposition proceedings specified in regs 5.4 and 5.10 are set out in Chapter 5 of the Patents Regulations 1991. In other actions, reg 22.24 empowers the Commissioner to determine the practice and procedure relating to evidence. The principles outlined in this part of the manual regarding the admissibility of the filed evidence have general applicability.

Where the Commissioner has to determine questions of fact, he or she is not obliged to decide in accordance with the rules of evidence applicable in a court of law. However, the Commissioner must make decisions on the basis of relevant and logically probative evidence.

Evidence not strictly in reply

Evidence-in-reply that contains evidence of new matters, and which in reality is evidence-in-support filed out of time, will not normally be considered in the determination of the opposition or other proceeding. The exception is where the Commissioner decides for oppositions filed before 15 April 2013 that the matter should be considered in the proceedings as further evidence, or decides to take the information into consideration under reg 5.23 (See 7.5.3 Evidence Filed Out of Time).

The parties to the proceedings should raise any issues with the evidence promptly. The Commissioner may then make a determination on the matter on an interlocutory basis or may direct that the matter be addressed in the substantive hearing of the matter.

Hearsay evidence

Evidence of a previous statement by another person is known as “hearsay” and is not eligible in court as proof of facts asserted in such a statement. This is defined in sec 59 of the Evidence Act 1995 (although a number of exceptions exist as set out in subsections 60-75 of that Act).

Hearsay evidence is admissible before the Commissioner. The Commissioner constitutes a tribunal and not a court, and she or he is not bound by rules of evidence that apply to a court.

Providing hearsay evidence can be considered reliable and is logically probative, the Commissioner may have regard to it in deciding a matter, provided that the parties are accorded natural justice. However, the weight which a hearing officer gives to hearsay evidence may be substantially different from the weight given to direct evidence.

That hearsay evidence may be admissible before a tribunal was confirmed by Deane J. in Minister for Immigration and Ethnic Affairs v. Pochi [1980] FCA 85 at [23]-[24] who agreed with the following statement by Diplock L. J in [1965] 1 QB 456 at p 488:

“These technical rules of evidence, however, form no part of the rules of natural justice. The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material, which as a matter of reason, has some probative value in the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue.”

Similarly, in an earlier UK judgement Lord Denning M.R. said:

“A tribunal of this kind is master of its own procedure, provided that the rules of natural justice are applied. [There is] is no reason why hearsay should not be admitted where it can fairly be regarded as reliable. Tribunals are entitled to act on any material which is logically probative ... Hearsay is clearly admissible before a tribunal. No doubt in admitting it, the tribunal must observe the rules of natural justice, but this does not mean that it must be tested by cross-examination. It only means that the tribunal must give the other side a fair opportunity of commenting on it and of contradicting it, …” (T.A. Miller Ltd v the Minister for Housing and Local Government and Another (1968) 1 WLR 992)

There may be many circumstances where hearsay evidence is the only evidence reasonably available. For example, the person in possession of the relevant information may be hostile or dead. However, a party seeking the exercise of a discretionary power ought not to rely on hearsay evidence merely to avoid inconvenience in obtaining a declaration from the person in possession of the facts. In those circumstances the Commissioner may reasonably require a declaration from the person in possession of the facts before being satisfied that she or he should exercise his or her discretionary powers.

The Wayback Machine

The Internet Archive is a US non-profit organisation that aims to archive the internet, and is accessible through the Wayback Machine. The Wayback Machine can be used as a source of information relating to publication dates of material on the internet (see 4.4.3.3 Non-Patent Literature and 4.1 Annex L – Establishing Publication Dates and Capturing Internet Citations).

In Voxson Pty Ltd v Telstra Corporation Limited (No 10) [2018] FCA 376, Perram J found that pages obtained from the Wayback Machine were inadmissible hearsay.

“35. The operator of the Wayback Machine is therefore making a representation that it copied the webpage into its archive and recorded the date on which it did so and that the webpage which appears in its archive is the webpage which existed on that date. Since Voxson wishes to prove what the state of the Respondents’ websites was on the relevant dates using these pages, it follows that it wishes to adduce the pages generated by the Wayback Machine as evidence that those pages were, in fact, in that form on those dates. This is hearsay.”

As the Commissioner is not bound by the Rules of Evidence, evidence from the Wayback Machine can be considered on the balance of probabilities:

“… patent offices around the world do rely on internet documents as relevant prior art for the purposes of determining novelty and inventive step and the Wayback Machine is one of the ways to establish the publication date of an internet document. The Internet Archive may not be entirely reliable in respect to dates of availability or content on a particular date, but absent any reason or evidence of error then the dates and content on Wayback Machine should be accepted on the balance of probabilities.” [Sheng-Ping Fang [2011] APO 102 at 95]

However, the nature of the evidence should be taken into account when according the appropriate weight to evidence from the Wayback Machine. For example:

“… the formatting is quite disordered and many of the photographs are missing. One does not perhaps need a particularly vivid imagination to think that these formatting problems are likely to be the result of some internal issue and may not affect the substance of the recording process. But there is no getting away from the proposition that the archiving process performed by the Wayback Machine plainly has limitations.” [Voxson at 40]

Libelous evidence

As a tribunal, the Commissioner of Patents can exercise the discretion to admit any evidence that may have some probity in an action before him or her. As to the weight given to such evidence, this is a matter for the Commissioner to decide after hearing the parties to the action.

The Commissioner has no power to consider the matter of libel which rightly falls within the jurisdiction of the Courts.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023