7.14 Appeals; ART and Judicial Review; Other Court Actions Involving the Commissioner; Section 105 Amendments

Also in this Chapter:

• 7.1 Role and Powers of the Commissioner in Hearings
• 7.2 Oppositions, Disputes and other proceedings-Procedural summaries
• 7.3 Directions
• 7.4 Opposition Documents, Requirements and Amendments
• 7.5 Evidence
• 7.6 Production of Documents, Summonsing Witnesses
• 7.7 Withdrawal and Dismissal of Oppositions
• 7.8 Hearings and Decisions
• 7.9 Costs
• 7.10 The Register of Patents
• 7.11 Extensions of Time and Restoration of Priority
• 7.12 Extension of Term of Standard Patents Relating to Pharmaceutical Substances
• 7.13 Orders for Inspection of non OPI Documents
• ​​​​​​​7.15 Computerised Decisions

Sub-chapters:

• 7.14.1 Appeals to the Federal Court
• 7.14.2 ART Review
• 7.14.3 Judicial Review (ADJR)
• 7.14.4 Other Court Actions Involving the Commissioner
• 7.14.5 Section 105 Amendments​​​​​​​

Key Legislation:

Patents Act:

• s35 Applications by eligible persons following revocation by Commissioner  
• s36 Other applications by eligible persons  
• s42 Micro-organisms ceasing to be reasonably available  
• s51 Appeal  
• s60 Hearing and decision by Commissioner  
• s75 Opposition to grant of extension  
• s81 Grant of patent of addition  
• s82 Revocation of patent and grant of patent of addition instead
• s100A Refusal to grant patent--re-examination before grant  
• s101 Revocation of patent--re-examination after grant  
• s101F Revocation of innovation patents following examination under section 101B
• s101J Revocation of innovation patent following re-examination  
• s101N Hearing and decision by the Commissioner  
• s104 Amendments by applicants and patentees
• s105 Amendments directed by court  
• s109 Appeal  
• s139 Parties to proceedings  
• s140 Commissioner to be given copies of orders  
• s154 Jurisdiction of Federal Court
• s159 Commissioner may appear in appeals
• s191A Commissioner's power to rectify register  
• s224 Review of decisions  

Patents Regulations:

• reg 22.26 Review of decisions

Note:

In this topic:

Relevant Legislation

The Act

The Regulations

See also:

Overview​​​​​​​

Relevant Legislation

The Act

The Regulations

See also:

Federal Court Rules 2011 – particularly Division 34.3 Intellectual Property

Administrative Decisions (Judicial Review) Act 1977

Administrative Appeals Tribunal Act 1975

Evidence Act 1995​​​​​​​​​​​​​​

Overview

There are a number of mechanisms under which decisions of the Commissioner may be subject to judicial or administrative appeal or review. Which applies in any particular circumstance depends on the statutory power under which the decision was made. For example, decisions under sections 35, 36, 42, 51, 60, 75, 81, 82, 100A, 101, 101F, 101J, 101N, 104, 109 and 191A may be appealed to the Federal Court.

Review of decisions under the provisions of the Act and Regulations specified in sec 224 and reg 22.26 may be appealed to the Administrative Appeals Tribunal (ART).

If the Act does not specify a right of appeal or review, then generally the only avenue is judicial review under the Administrative Decisions (Judicial Review) Act.

The period in which an appeal may be filed to the Federal Court (e.g. from a decision in a substantive opposition, determination of entitlement or a refusal of an application after examination or re-examination) is 21 days from the date of the decision.

For an application for review to the ART (e.g. from a decision on an extension of time) or to the Federal Court under the AD(JR) Act the time period is generally 28 days from the date of the decision.

Further information about filing an appeal or application for review can be obtained from the Federal Court or ART. It is strongly advised that professional legal advice be obtained before instituting proceedings noting that in court proceedings an unsuccessful party may be subject to an order for costs against them.  

This part of the manual also covers other court proceedings in which the Commissioner is not a party but has a right to appear, and applications to amend a patent request or specification under sec 105 .