7.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document

Also in this Chapter:

• 7.2.1 Oppositions to grant of a standard patent-Section 59 oppositions
• 7.2.2 Opposition to Innovation Patents-Section 101M Oppositions
• 7.2.3 Oppositions to an Extension of Term of a Pharmaceutical Patent (Section 75(1) Oppositions)
• 7.2.5 Oppositions to Extensions of Time Under Section 223 (Section 223(6) Oppositions
• 7.2.6 Oppositions to Grant of a Licence (Regulation 22.21(4) Oppositions)
• 7.2.7 Disputes Between Applicants and Co-Owners (Directions Under Section17 and Determinations Under Section 32)
• 7.2.8 Entitlement Disputes (Applications Under Sections 33-36 and 191A)

Sub-chapters:

• 7.2.4.1 Commencing the Opposition - Filing a Notice of Opposition
• 7.2.4.2 Filing the Statement of Grounds and Particulars
• 7.2.4.3 Evidence and Evidentiary Periods
• 7.2.4.4 Finalising the Opposition​​​​​​​

Key Legislation:

Patents Act:

• s102 What amendments are not allowable?
• s104 Amendments by applicants and patentees 
• s223 Extensions of time

Patents Regulations:

• reg 5.12 Practice and procedure
• reg 9.5 Completion of re-examination
• reg 22.8 Costs
• reg 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)
• Schedule 7 Fees

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

Overview

Under section 104(4) of the Patents Act, the Minister or any other person may, subject to and in accordance with the regulations, oppose the Commissioner allowing an amendment to a patent request, specification or other filed document.  

On and after 15 April 2013, a section 104 amendment request may only be opposed on the ground that the amendment is not allowable under section 102 or regulation 10.3.

An opposition to a request for leave to amend a relevant document is generally filed by a person (the “opponent”) who will be in some way affected by the amendment.  The opposition process provides the opponent with the opportunity to make out a case to persuade the Commissioner that the amendment should not be allowed.

An opposition under section 104(4) 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 amendment is opposed and the facts and circumstances supporting the grounds.  Where appropriate, the parties will be provided with periods for filing evidence to establish their respective cases, after which the Commissioner will hear and decide the matter.   

Under reg 5.12, the Commissioner may decide the practice and procedure to be followed and direct the parties accordingly.

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