We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights.

3.2.2 Section 101M - Opposition to an Innovation Patent

Date Published

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

In this topic:

Relevant Legislation

The Act

Section 18

Patentable inventions

Section 33

Applications by opponents etc.

Section 40


Chapter 9A

Examination, re-examination and opposition – innovation patents

Section 223

Extensions of time

The Regulations

Chapter 5


Reg 22.8


Reg 23.36(2)

Transitional provisions

Schedule 7



Under section 101M of the Patents Act 1990, the Minister or any other person may, in accordance with the regulations, oppose a certified innovation patent and seek revocation of it, on one or more of the following grounds of invalidity, but no others

a. that the patentee is either:

i. not entitled to the patent (section 33(3))

ii. entitled to the patent but only in conjunction with some other person (section 33(4));

b. that the complete specification does not comply with section 40(2), 40(3) or 40(3A);

c. that the invention is not a patentable invention because it does not comply with paragraph 18(1A)(a), (b) or (c);

d. that the invention is not a patentable invention under subsection 18(2) or (3).

An opposition to an innovation patent will generally be filed by a person (the “opponent”) who is in some way affected by the certified patent.  The opposition process provides the opponent with the opportunity to make out a case in order to persuade the Commissioner that the patent should be revoked.

An opposition under section 101M commences when a person files a notice of opposition, a statement of grounds and particulars and the evidence in support of the opposition, and pays the appropriate fee.  The parties are provided with periods for filing evidence in answer and reply, after which the Commissioner will hear and decide the matter.  

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

Back to top