7.2.1 Section 59 - Opposition to Grant of a Standard Patent

Also in this Chapter:

• 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

Sub-chapters:

• 7.2.1.1 Commencing the Opposition - Filing a Notice of Opposition
• 7.2.1.2 Filing the Statement of Grounds and Particulars
• 7.2.1.3 Evidence and Evidentiary Periods
• 7.2.1.4 Finalising the Opposition​​​​​​​

Key Legislation:

Patents Act:

• s18 Patentable inventions
• s33 Applications by opponents etc.
• s40 Specifications
• s49 Acceptance of standard patents
• s59 Opposition to grant of standard patent
• s223 Extensions of time​​​​​​​

Patents Regulations:​​​​​​​

• Chapter 5 Oppositions 
• reg 9.5 Completion of re-examination
• reg 22.8 Costs
• reg 23.36 Amendments made by Raising the Bar Act
• Schedule 7 Fees​​​​​​​

Related Chapters: 

• ​​​​​​​7.4.3 Amending Opposition Documents
• 7.3.1.2 Further and Better Particulars
• 7.7.2 Dismissal of an opposition

On this Page

• Overview- Section 59 Oppositions

Note: This information applies on and after 15 April 2013.

Overview

Under section 59 of the Patents Act 1990, the Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but no others:

1. that the nominated person is either:
   1. not entitled to grant of a patent for the invention (section 33(1))
   2. entitled to grant of a patent for the invention but only in conjunction with some other person (section 33(2));
2. that the invention is not a patentable invention (i.e. it does not satisfy the requirements of section 18);
3. that the specification filed in respect of the complete application does not comply with section 40(2) or 40(3) or 40(3A).

An opposition to grant of a standard patent is generally filed by a person (the “opponent”) who will be in some way affected by the grant.  The opposition process provides the opponent with the opportunity to make out a case to persuade the Commissioner that the patent should not be granted.

An opposition under section 59 commences when a person files a notice of opposition in the approved form within the period allowed by the regulations, and pays the appropriate fee. Subsequently, the opponent files a statement of grounds and particulars, setting out the grounds upon which grant of the patent is opposed and the facts and circumstances supporting the grounds. Both parties are provided with periods for filing evidence to establish their respective cases, after which the Commissioner will hear and decide the matter.  

The procedures involved in this process are explained more fully in the following sections.