7.2 Oppositions, Disputes and Other Proceedings - Procedural Summaries

Also in this Chapter:

• 7.1 Role and Powers of the Commissioner in Hearings

  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 Extensions of Term of Standard Patents Relating to Pharmaceutical Substances
• 7.13 Orders for Inspection of non OPI Documents
• 7.14 Appeals AAT, ADJR, The Courts
• 7.15 Computerised Decisions

Sub-chapters:

• 7.2.1 Section 59 - Opposition to Grant of a Standard Patent, 
• 7.2.2 Section 101M - Opposition to an Innovation Patent, 
• 7.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent, 
• 7.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document, 
• 7.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)
• 7.2.6 Reg 22.21(4) - Opposition to Grant of a Licence​​​​​​​

Key Legislation:

Patents Act:

• s32 Disputes between applicants, 
• s35 Applications by eligible persons following revocation by Commissioner
• s36 Other applications by eligible persons  
• s61 Grant of standard patent  
• s104 Amendments by applicants and patentees  
• s137 Revocation on surrender of patent  
• s191A Commissioner's power to rectify register   
• s223 Extensions of time

Patents Regulations:

• reg 22.21 Protection or compensation of certain persons

On this Page:

• Types of Oppositions
• Disputes and other proceedings​​​​​​​​​​​​​​

Oppositions

A number of potential actions by the Commissioner of Patents can be opposed.  

Substantive Oppositions

Substantive oppositions generally focus on patentability issues and the patent term, and are oppositions to the following actions by the Commissioner:

• grant under section 61 of a standard patent (see 7.2.1 Section 59 - Opposition to Grant of a Standard Patent);
• certification under section 101E of an innovation patent (7.2.2 Section 101M - Opposition to an Innovation Patent); or
• an extension of term under section 76 of a patent for a pharmaceutical product (7.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent).

Procedural oppositions

Procedural oppositions are oppositions to matters that arise during pre-grant processing of a patent application and the post-grant lifetime of a patent.  Procedural oppositions involve an opposition to:

• an amendment under section 104 to a patent request, specification or other filed document (7.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document);
• an extension of time under section 223 for performing an action in relation to a patent, patent application, or any proceedings under the Patents Act that is required to be done, but was not done, within a certain time (7.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)); or
• grant of a licence under regulation 22.21(5) (7.2.6 Reg 22.21(4) - Opposition to Grant of a Licence).

Disputes and other proceedings

Disputes may arise as to the entitlement of a legal person to ownership of a patent, for example, who is the actual inventor or who derives entitlement from them.  Similarly, a patent may be granted to a person who is not entitled to the invention, or the name of an entitled person may be omitted from the Register.  

Disputes and other proceedings may arise as a result of:

• requests under section 32 in relation to joint applicants;
• applications for a declaration (and directions) under section 36;
• an application for a determination under section 35, as a result of the revocation of a patent under section 137 following an offer to surrender; and
• application for a declaration under section 191A.

The practice and procedures involved in resolving oppositions, disputes and other proceedings before the Commissioner are summarised in this section of the manual.