2.22.3.3 Re-Examination of Standard Applications and Innovation Patents by the Commissioner During Opposition

The Act and Regulations allow the Commissioner to re-examine standard applications and innovation patents during opposition. This is entirely at the discretion of the Commissioner, and neither the opponent nor any other person has the right to ask for re-examination to occur.

The Commissioner will only consider re-examining an application during opposition if it is likely that the opposition proceedings can be curtailed and where all parties agree to re-examination taking place. This is because re-examination is ex parte and the opponent has no right of involvement or appeal. The documents being considered may also be raised in opposition and dealing with them in re-examination could be seen as "pre-judging" the opposition.

In Novozymes A/S v North Carolina State University and Bioresource International, Inc. [2009] APO 18 the opponent, after serving its statement of grounds and particulars, requested that the Commissioner re-examine the patent application in question. The applicant subsequently objected. The Deputy Commissioner decided that in this case there was a significant likelihood that re-examination would prolong the opposition without achieving any better result than if the opposition was prosecuted promptly, and that therefore re-examination was inappropriate.

Where an opposition has been withdrawn, the normal requirements for re-examination apply. The opposition file will be referred to the relevant examination section and allocated by the supervising examiner to an examiner for review. In such cases, the examiner will instigate re-examination only if it is warranted and with the agreement of the supervising examiner.

Where re-examination is required, the report should be issued within 8 weeks from the date of withdrawal of the last opposition, consistent with the Customer Service Charter Timeliness Guidelines.