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In general, ex parte hearings arise from a dispute between the person concerned and the Commissioner.  In this situation, the person may request a hearing at any time.  If the Commissioner perceives that a stalemate has been reached, it may be suggested that the person request a hearing.

Dispute During Examination

Ex parte hearings are usually a dispute with the Commissioner during the examination process. The following information relates to hearings in this context, however also applies as appropriate to other situations.

A request for a hearing may be received in response to an "invitation" issued in an examination report (see PERP codes [P6] and [H41]).  Examiners should note that a report containing these PERP codes are not to issue without the agreement of the supervising examiner in consultation with another the Supervising Examiner (OEP).

Where a request for a hearing (or written decision) is received, the application will be referred to OEP for review prior to setting the matter for hearing.

Where the hearing request has not been received in response to a [P6] "invitation", OEP may refer the case to an independent supervising examiner for advice. If the supervising examiner indicates that the case has been inadequately handled (e.g. if the search is incomplete or otherwise incorrectly done), the file will be returned to the examination section for rectification. If, as a result, new objections arise, a further adverse report is to issue, explaining the situation and giving the applicant an opportunity to respond to the new objections before the matter is set for a hearing.

The Commissioner can set a hearing to resolve matters even if the applicant has not requested to be heard (Miles v Commissioner of Patents [2014] FCAFC 109).

Note: In these circumstances, an extension of time under sec 223(1) may be justified in respect of the time for acceptance.

Hearing Procedure

If the hearing is held in Canberra, the hearing officer should invite the examiner of the case concerned and, where appropriate, the relevant supervising examiner, to attend. As the hearing is an independent assessment of outstanding objections, the examiner is only at the hearing as an observer and does not take part.

If the hearing is requested in relation to matter constituting only part of an examiner's report, this matter can be dealt with (presuming it is independent of the remainder of the report with respect to the issues involved) and appropriate action taken. Thereafter, the case is to be referred back to the examiner for action pursuant to the remaining objections.

If the hearing officer concludes that the hearing resulted from a less than ideal handling of the application during examination, a refund of some, or all, of the hearing fee may be due. This will likely occur only when the application is accepted without a written decision being issued. However, acceptance without a written decision does not mandate a refund of the hearing fee, as acceptance may be the consequence of persuasive argument or further evidence not available to the examiner.

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