7.2.2.2 Evidence and Evidentiary Periods

Date Published

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)

Note: 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.

 

General information

The procedures for filing evidence and the evidentiary periods in a substantive opposition are governed by regs 5.7 and 5.8, respectively.  

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.

 

Filing evidence

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.  

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

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.

 

Evidence in reply

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.  

 

Extending an evidentiary period

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:

  1. 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
  2. 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 (e.g. 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.  

Evidence filed out of time (Regulation 5.23)

There are no provisions for the formal filing of evidence outside of the periods discussed above. However reg 5.23 is available for the Commissioner to use his or her discretion to consult documents that are relevant to the opposition, have not yet been filed and are available to the Patent Office. If the Commissioner proposes to rely on such documents, the Commissioner must give the parties notice of the Commissioner's intention to do so, provide the parties with copies of the documents, and an opportunity to give evidence or make representations about the documents.

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

 

Amended Reasons

Amended Reason Date Amended

New page to remove obsolete information. Fixed links to other page in 7.2.2.

New page 7.2.2.2 created to remove obsolete information.
Back to top