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Date Published

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

Where there is another proceeding or action in relation to an application or patent that is under opposition, it may be appropriate to stay the opposition until the other matter is finalised.

The most common examples will be amendment of the specification, or amendment of the statement of grounds and particulars in the opposition. Where the way in which the opposition progresses is highly dependent on the outcome of the amendment, it is sensible for the opposition to be stayed.  However, if the amendment does not significantly alter the scope of the opposition, the opposition will not be stayed.

The form of the stay would typically be:

The opposition is stayed until the Commissioner advises the parties that <the amendment> has been allowed, refused or withdrawn.

A stay may also be available during appeal or review of a decision.

A stay does not halt the evidentiary periods for filing evidence in a substantive opposition. Rather, the fact that the opposition has been stayed is an exceptional circumstance, that can provide the basis for an extension of time for filing evidence. Therefore, in the presence of a stay the Commissioner may exercise initiative and extend the period for filing evidence by direction, without the need for a party to gain extensions of time during the period specified in the direction.  In the case of procedural oppositions, see Time for Filing Evidence in a Procedural Opposition.

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