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3.3.1 Directions in Opposition Proceedings

Date Published

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



Relevant Legislation

The Regulations

Chapter 5

Opposition

Schedule 7

Fees




Overview

The Patents Act 1990 introduced into the opposition procedure “directions” for the conduct of proceedings.  In broad terms, directions enable the Commissioner to have greater control over the conduct of an opposition.  The relevant provisions are in regs 5.12 and 5.22 as follows:

5.12  Practice and procedure

The Commissioner may:

(a) decide the practice and procedure to be followed in a procedural opposition; and

(b) direct the parties accordingly.

5.22  Commissioner may give directions

(1) The Commissioner may give a direction in relation to an opposition to which this Chapter applies:

(a) if requested by a party in writing; or

(b) on the Commissioner's own initiative.

(2) If the Commissioner proposes to give a direction, the Commissioner must give the parties an opportunity to make representations about the direction.

(3) A direction must not be inconsistent with the Act or these Regulations.

(4) The Commissioner must notify the parties of the direction as soon as practicable.

See “Requesting a direction” below in relation to fees which may be applicable for making representations under regulation 5.22(2).

The directions process can be initiated by a party to the action, or by the Commissioner.

Directions in relation to transitional applications (applications under opposition, where an evidentiary period had commenced but had not been completed prior to 15 April 2013) are covered in 3.3.1.1 Direction to Stay an Opposition Pending Another Action.

There is also provision in reg 22.14 for the Commissioner to “give notice” to a person to perform an act, file a document or produce evidence. These matters would normally be dealt with by the Deputy Commissioner in OH&L, and are not covered in this chapter.




Requesting a direction

Directions can be requested by either party, in writing.  Alternatively, directions can be made by the Commissioner, without the need for a request.  

Where a party requests a direction, the Commissioner will provide the other party with an opportunity to make representations prior to making a decision. The fee for making a formal representation objecting to a proposed direction (i.e. leading to a hearing on the proposed direction) can be found at Schedule 7, item 220. No fee is payable for merely making representations to the Commissioner expressing a viewpoint on the proposed direction, where the representations do not comprise a formal objection to the proposed direction. Once a decision is made, the Commissioner must notify the parties of the direction.

The Commissioner must only make a direction if satisfied that it is appropriate.  See Mobay Corp. v Dow Chemical Co. 24 IPR 379; (1982) AIPC 90-895, in which it was said:

“The first point that should be made is that the power is discretionary.  Consequently, the Commissioner must be satisfied that the exercise of the power is appropriate in the circumstances.”




Directions that can be given

The range of directions that can be made is wide.  The only limitation imposed by the Regulations is that they must not be inconsistent with the Act or Regulations.  

The following parts of the Manual discuss some of the more common directions.  Most of these directions can be requested by a party, or proposed by the Commissioner of their own initiative.


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