3.2.1 Section 59 - Opposition to Grant of a Standard Patent

Date Published

Note: This information applies on and after 15 April 2013.

In this topic:

Relevant Legislation

The Act

Section 18

Patentable inventions

Section 33

Applications by opponents etc.

Section 40


Section 49

Acceptance of standard patents

Section 59

Opposition to grant of standard patent

Section 223

Extensions of time

The Regulations

Chapter 5


Reg 9.5

Completion of re-examination

Reg 22.8


Reg 23.36(2)

Transitional provisions

Schedule 7



Under section 59 of the Patents Act 1990, the Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but no others:

  1. that the nominated person is either:
    1. not entitled to grant of a patent for the invention (section 33(1))
    2. entitled to grant of a patent for the invention but only in conjunction with some other person (section 33(2));
  2. that the invention is not a patentable invention (i.e. it does not satisfy the requirements of section 18);
  3. that the specification filed in respect of the complete application does not comply with section 40(2) or 40(3) or 40(3A).

An opposition to grant of a standard patent is generally filed by a person (the “opponent”) who will be in some way affected by the grant.  The opposition process provides the opponent with the opportunity to make out a case to persuade the Commissioner that the patent should not be granted.

An opposition under section 59 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 grant of the patent is opposed and the facts and circumstances supporting the grounds. Both parties are 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.