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7.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent

Date Published

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


Under section 75 of the Patents Act 1990, the Minister or any other person may oppose the grant of an extension of the term of a standard patent. The opposition may only be on the ground that one or more of the requirements of sections 70 and 71 are not satisfied in relation to the application for an extension of term.

An opposition to an extension of term of the patent is generally filed by a person (the “opponent”) who would 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 term of the patent should not be extended.

Since the only grounds for opposition are that the application for extension of the patent (section 70) and the form and timing of the application (section 71) have not met the requirements of the Act, patentability issues such as novelty, inventive step, manner of manufacture and utility cannot be brought into the opposition.  

An opposition under section 75(1) 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 the extension of term 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.

Amended Reasons

Amended Reason Date Amended
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