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3.2.4.1 Commencing the Opposition - Filing a Notice of Opposition

Date Published

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


Timing and requirements for filing a notice of opposition

When leave is granted to amend a filed document after acceptance, in certain circumstances a notice of that fact is published in the Official Journal of Patents under reg 10.5(2).

Regulation 5.10(1) sets out the requirements for the notice of opposition where a person seeks to oppose allowance of an advertised amendment.

Amendment requests advertised on or after 15 April 2013

To oppose an amendment request advertised under reg 10.5(2) on or after 15 April 2013, a person must file a notice of opposition with the Commissioner within 2 months from the day a notice is published that leave has been granted for the amendment (reg 5.10(1)).

Amendment requests advertised before 15 April 2013

Where the amendment request which was advertised before 15 April 2013, the opponent must file its notice of opposition with the Commissioner within 3 months from the day a notice is published that leave has been granted for the amendment (reg 5.10(1), subject to reg 23.36(2)).

In each case, the notice of opposition must be in the approved form (available on the IP Australia website) and be accompanied by the appropriate fee (see Schedule 7, item 216).

The opposition officer will acknowledge receipt of the notice to the parties and give the patent applicant or patentee a copy of the notice as soon as practicable (reg 5.10(4)).


Extending the time to file a notice of opposition

In some circumstances, a short extension of time to file a notice of opposition may be available under section 223 (see 3.11.1 Extensions of Time – section 223).  However, a notice of opposition will be of no effect if it is filed after an amendment is allowed, or a patent granted in respect of the amended application.


Amending a notice of opposition

Under regs 5.14 and 5.15, an opponent may request an amendment to the notice of opposition to correct a clerical error or obvious mistake, or to change the name of the opponent where the opponent’s right or interest in an opposition is transferred to another person.

For more information see 3.4.3 Amending opposition documents.


Withdrawal of the opposition

An opponent may withdraw an opposition at any time, by filing a signed notice of withdrawal in the approved form (available on the IP Australia website).

For more information see 3.7.1 Withdrawal of an Opposition.

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