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3.2.5.4 Finalising the Opposition

Date Published

Note: Unless explicitly stated otherwise, the information in this part applies to:

(i)   oppositions commenced on or after 15 April 2013; and
(ii)  oppositions commenced before 15 April 2013 in which the Commissioner has not set a hearing date or issued a notice of hearing to the parties before 15 April 2013.

Pursuant to reg 23.36(2), for oppositions referred to in (ii), a reference in reg 5.20 (as in force from 15 April 2012) to regs 5.26, 5.19 or Part 5.4 should be read, respectively, as regs 5.15, 5.6 or 5.5 as in force immediately before 15 April 2013.  Regulation 5.12 as in force before 15 April 2013 is taken not to apply.


Overview

Providing the opposition has not been withdrawn or dismissed, the next step in the opposition process is a hearing of the matter, after which a decision is issued.  The function of the hearing is to enable the parties to fully present their views supported by reasons and evidence, in order that the hearing officer is in a position to make a correct and just decision.  

Where an opposition has not been set for hearing prior to 15 April 2013, the hearing and decision are governed by reg 5.20 subject to the transitional reg 23.36(2) where appropriate.  

An opposition will be set for hearing either on the request of a party or on the Commissioner’s own initiative.  Once the hearing officer decides the opposition, the parties will be notified of the decision as soon as practicable.


Timing and requirements for requesting a hearing

Providing any evidentiary periods have ended, and the opposition has not been withdrawn, dismissed or previously heard and decided, either party may request a hearing.  The request must be made in the approved form (available on the IP Australia website) and be accompanied by the appropriate fee (Schedule 7, item 230).

On receipt of a request for a hearing, the opposition officer will give a copy to the applicant or patentee.  


Nature of the hearing

The hearing may be held orally or by written submissions at the Commissioner’s discretion (reg 5.20(3)).  

Oral hearings

Where the Commissioner decides on an oral hearing, the opposition officer will notify the parties of the date, time and place of the hearing.  For more information on the hearing process, see 3.8 Hearings and Decisions.

Reg 5.20(4) requires both parties to file a summary of their submissions prior to the hearing.  The opponent must file the summary at least 10 business days before the hearing, and the applicant at least 5 business days before the hearing.  

If a party fails to file a summary of submissions within the time prescribed by the regulations, under reg 5.20(6), the hearing officer will consider this in making an award of costs in the opposition.

Note: As of 15 April 2013, the summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner.   

On receipt of a summary of submissions, the opposition officer will give a copy of a party’s summary to the other party as soon as practicable.  

Hearings by written submissions

Where an opposition is set for hearing by written submissions, the delegate will issue a direction to the parties specifying the process and time frame in which the written submissions are to be filed (see 3.3.1 Directions in Opposition Proceedings).

For more information on the hearing process, see 3.8 Hearings and Decisions.


The decision

Once the opposition is decided, the parties will be notified of the decision.  For more information on decisions see 3.8 Hearings and Decisions.

The decision will usually include an award of costs in the opposition.  For more information on costs see 3.9 Costs.


Review of a decision

An application for review of the hearing officer’s decision in an opposition under section 223(6) to a request for an extension of time may be made to the Administrative Appeals Tribunal under section 224.

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