7.2.2.2 Evidence and Evidentiary Periods

Also in this Chapter:

• 7.2.2.1 Commencing the Opposition - Filing the Opposition Documents​​​​​​​
• 7.2.2.3 Finalising the Opposition

Key Legislation: 

Patents Act: 

• s18 Patentable inventions
• s33 Applications by opponents etc.
• s40 Specifications
• Chapter 9A Examination, re-examination and opposition – innovation patents
• s101E Certificate of examination  
• s101M Opposition to innovation patent  
• ​​​​​​​s223 Extensions of time​​​​​​​

Patents Regulations:

• reg 5.6 Notice of opposition and statement of grounds and particulars--section 101M opposition
• reg 5.7 Filing of evidence
• reg 5.8 Evidentiary periods
• reg 5.9 Extension of time for filing evidence
• reg 5.22 Commissioner may give directions
• reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

Related Chapters: 

• 7.3.1 Directions in Opposition Proceedings
• 7.5 Evidence
• 7.11 Extensions of Time

Note: This information applies to oppositions commenced on or after 15 April 2013.  
Where specified, the information applies to oppositions commenced before 15 April 2013, provided an evidentiary period commenced on or after 15 April 2013.

Note: As of 15 April 2013, the statement of grounds and particulars and accompanying documents, the evidence in an opposition and the summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner.

On this page

General information

For oppositions commenced on or after 15 April 2013, the procedures for filing evidence and the evidentiary periods in a substantive opposition are governed by regs 5.7 and 5.8, respectively.  

In oppositions commenced prior to 15 April 2013, the evidentiary stages are governed by reg 5.8, as in force immediately before 15 April 2013, subject to reg 23.36(2).   

For information on evidence in general see 7.5 Evidence.

Physical evidence

Physical evidence should not be filed.  Rather, the documentary evidence should include a description of the physical item including, as appropriate, a photograph or video recording as well as an indication of the place at which the item may be inspected.

The Commissioner may subsequently order inspection of the item or direct that it be filed, as the Commissioner determines to be appropriate.

Note: Where an opposition commenced before 15 April 2013, and evidence is due to be served on a party on or after 15 April 2013, and the evidence has not been served before 15 April 2013, the evidence must be filed with the Commissioner on or before the due date for service and the opposition officer will give a copy of the evidence to the other party.  

In an opposition commenced before 15 April 2013, pursuant to reg 23.36(2), if the party is given the evidence after the date it is filed, the Commissioner will extend the subsequent evidentiary period by the number of days equal to the number of days between the filing date and the date the evidence was given to the other party.

Filing evidence

On or after 15 April 2013, regardless of when the opposition commenced, a party seeking to rely on evidence in an opposition under section 101M must file the evidence with the Commissioner within the evidentiary periods indicated below.  

Where an opposition commenced on or after 15 April 2013, if a party files all of the evidence before the end of an evidentiary period, the party must inform the Commissioner of this fact.

Note: The provisions of reg 5.6(1)(c), that documents mentioned in the statement of grounds and particulars must be filed with the statement, does not replace the need for documents to be adduced in evidence.  All documents that the opponent intends to rely on to establish the grounds of opposition must be filed with the evidence in support, even if they are also filed under reg 5.6(1)(c).

Evidence in support

Under reg 5.8(1)(a), the opponent must file any evidence in support of the opposition to an innovation patent at the same time as it files the opposition documents under reg 5.6(1).

Evidence in answer

Oppositions commenced on or after 15 April 2013

If the opponent files evidence in support of the opposition, the patentee must file any evidence in answer to the evidence in support within 3 months from the day they are given a copy of the evidence and notified that all the evidence in support has been filed.

Where the opponent does not file any evidence in support, the patentee must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the opposition officer notifies the patentee that no evidence in support was filed.

Oppositions commenced before 15 April 2013

Pursuant to reg 23.36(2), if the opponent served evidence in support of the opposition, the patentee must file any evidence in answer to the evidence in support within 3 months after being served with the evidence in support.

Where the opponent does not provide any evidence in support of the opposition, the patentee must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the notice of opposition and the statement was served.  

Evidence in reply

Oppositions commenced on or after 15 April 2013

If the patentee files evidence in answer, the opponent must file any evidence in reply to the evidence in answer, within 2 months from the day the opposition officer notifies the parties that all the evidence in answer has been filed.  

Oppositions commenced before 15 April 2013

Pursuant to reg 23.36(2), if the patentee files (or before 15 April 2013, serves) evidence in answer, the opponent intending to rely on evidence in reply must, within 1 month of being given or served with the evidence, file:

• evidence in reply to the evidence in answer; or
• a copy of a notice of intention to serve evidence in reply.

Pursuant to reg 23.36(2), if a notice of intention is filed, the opponent must file the evidence in reply within 3 months of being given the evidence in answer (or, before 15 April 2013, served with the evidence in answer under reg 5.8, as in force immediately before 15 April 2013).

Extending an evidentiary period

Where an evidentiary period commenced before 15 April 2013

A party may apply under reg 5.10 as in force immediately before 15 April 2013, for an extension of an evidentiary period that commenced prior to 15 April 2013.

See 7.11 Extensions of Time.

Where an evidentiary period commenced on or after 15 April 2013

Under reg 5.9, the Commissioner may extend the time for filing evidence in an opposition, either on request of a party in writing, or on the Commissioner’s own initiative.  

An extension of time to file evidence under reg 5.9 will only be available where the party making the request can establish that:

• the party seeking the extension has made all reasonable efforts to comply with all relevant filing requirements, and has been unable to file their evidence despite acting promptly and diligently to ensure it is filed in time; or
• there are exceptional circumstances that warrant the extension.

Where an extension of time to file evidence is refused, the requesting party will not be allowed a short extension to file evidence that is immediately available, or to validate evidence that has already been filed out of time.

For more information and the bases upon which an evidentiary period can be extended see 7.11 Extensions of Time.

Extensions of time in a substantive opposition are not available by direction

The Commissioner cannot make a direction under reg 5.22 to extend an evidentiary period in a substantive opposition.

However, where there is another proceeding or action in relation to an opposed application (eg. amendments to the specification under section 104), it may be appropriate to stay the opposition until the other matter is finalised (see 7.3.1 Directions in Opposition Proceedings).  A stay is an exceptional circumstance, and can form the basis for an extension of time.  

Further evidence

Further evidence is not available for oppositions commenced on or after 15 April 2013.

For oppositions commenced before 15 April 2013, a party may request leave to file further evidence under the provisions of reg 5.10(4) as in force immediately before 15 April 2013.

Any request for an extension of time to file evidence responding to the further evidence, should be made under reg 5.10(2) as in force immediately before 15 April 2013.  The request should be in the approved form (available on the IP Australia website) and be accompanied by the appropriate fee (Schedule 7, item 218 as in force before 15 April 2013).  The request will be processed in accordance with reg 5.10(5) as in force immediately before 15 April 2013.

For more information on further evidence and extensions of time to file evidence responding to the further evidence see 7.5 Evidence.