3.4.4 Filing Opposition Documents

Note: This information applies to oppositions and other proceedings commenced before, on or after 15 April 2013 where a document or evidence is filed on or after 15 April 2013.  

In this topic:

Relevant Legislation

The Act

The Regulations

See also:

Electronic Transactions Act 1999

General

Note: The obligation to serve a document or evidence on another party has been removed with effect from 15 April 2013. Documents and evidence need only be filed with IP Australia and the Commissioner is responsible for making a copy of the document available to the other party.  

Under sec 214B and sec 214C, the Commissioner may give a direction about filing a document or evidence respectively.  (Note that reg 5.3 previously applied to documents or evidence filed before 24 February 2019).  

Under sec 214C(2), the Commissioner may give a direction specifying:

a) the number of copies of evidence to be filed;

b)the form in which the evidence is to be filed (including the circumstances in which physical articles, other than documents, are or are not permitted to be filed);

c) the means by which evidence is to be filed.

Under reg 22.16A, if a person does not comply with the direction under sec 214C , the Commissioner may treat the evidence:

a) as not having been filed and notify the person, including in the notification a statement indicating how the direction has not been complied with; or

b) as having been filed, but direct the person to do such things as are necessary to ensure that the direction is complied with.  

Where the person does not comply with the direction under reg 22.16A within 2 months of the day it was given, the Commissioner must treat the evidence as not having been filed.

Normally a document or evidence may be filed in person or by post or by means specified in IP Australia’s Electronic Business Rules.

The Commissioner has however directed (under reg 5.3) that certain opposition documents and evidence must be filed electronically with IP Australia by means approved by the Commissioner.

The Commissioner has also directed that physical articles should not be filed unless directed by the Commissioner.

For proceedings that are not oppositions these directions are made under reg 22.24.

Documents that must be filed electronically

Note: This information applies to oppositions and other proceedings commenced before, on or after 15 April 2013 where a document or evidence is filed on or after 15 April 2013.

The Commissioner has directed that the following documents and evidence must be filed electronically by the approved means for that purpose – currently Objective Connect:

• Statement of Ground and Particulars (SGP)
• A copy of any document cited in the SGP
• Evidence required to be produced by the Commissioner
• Evidence in Support
• Evidence in Answer
• Evidence in Reply
• Evidence in procedural oppositions or proceedings under sec 32 and sec 36, etc
• Summary of submissions for oral hearings.

Also, for oppositions commenced before 15 April 2013:

• Further evidence
• Further evidence in response.

For oppositions under sec 101M only, a notice of opposition may also be filed by the approved means but only after contacting Patent Oppositions Hearings & Legislation for assistance.

The requirements for document naming, file formats and process for filing documents and evidence using Objective Connect are specified in the Patents User Guide.

Note that in addition to the above documents, covering letters associated with the SGP, evidence and other permitted document types can also be filed using Objective Connect. These should be contained in a separate file and include in its name the descriptor ‘letter’ and the date e.g. Evidence in support – Letter 15-04-2013.

Other opposition documents and correspondence including requests for extensions of time to file evidence (except where accompanied by evidence) must not be filed using Objective Connect. If so, these may be treated as not filed.

Date of filing

Note: This information applies to oppositions and other proceedings commenced before, on or after 15 April 2013 where a document or evidence is filed on or after 15 April 2013.

The date of filing a document through the approved electronic means is determined under the Electronic Transactions Act 1999. The time of filing is the time (and date) in Canberra, i.e. AEST or AEDT as applicable, when the requirements for filing in the system have been met and recorded.

If a document is filed other than in the approved means, the Commissioner may treat the document as not filed or may treat it as filed and direct that the party concerned comply. In the latter case, the filing date of the document is preserved despite it not being filed according to the Commissioner’s requirements.

Physical Evidence

Note: This information applies to oppositions and other proceedings commenced before, on or after 15 April 2013 where a document or evidence is filed on or after 15 April 2013.

Physical articles may only be filed with leave of the Commissioner. It is preferred that documentary evidence includes a description of any relevant physical article and as appropriate a photograph or video recording as well as an indication of the place at which the item may be inspected.

On application, and in the absence of agreement between the parties, the Commissioner may order inspection at a place and on terms that the Commissioner considers appropriate. The Commissioner may also direct that the item be produced but will do so only where the Commissioner considers it necessary for the determination of the opposition or other proceeding.