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3.2.6 Reg 22.21(4) - Opposition to Grant of a Licence

Date Published

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

In this topic:

Relevant Legislation

The Act

Section 6

Deposit requirements

Section 41

Specifications: micro-organisms

Section 104

Amendments by applicants and patentees

Chapter 15

Special provisions related to associated technology

Section 223

Extensions of time

The Regulations

Chapter 5


Reg 22.21

Protection or compensation of certain persons

Reg 22.8


Reg 23.36(2)

Transitional provisions

Schedule 7



The Patents Regulations 1991 include provisions for the protection or compensation of persons who availed themselves of or exploited, or took definite steps by contract or otherwise to avail themselves of or exploit, an invention within a period specified in:

  • section 41(4)(c) – in which the deposit requirements of section 6(c) or (d) were not satisfied for a specification relating to a micro-organism;
  • section 150(4) – in which an application was lapsed under section 148; or
  • section 223(9) – in which the patent was lapsed or ceased because of the failure to do the relevant act.

Such a person may apply to the Commissioner under reg 22.21(2) for a licence to exploit the invention.

Under reg 22.21(4) certain persons specified in reg 22.21(3) (broadly the applicant, or patentee of the relevant patent) may oppose the Commissioner granting a licence.  

An opposition commences when a relevant 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 licence is opposed and the facts and circumstances supporting the grounds.  Where appropriate, the parties will be 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.

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