7.2.7.1 Procedure

Also in this Chapter:

• 7.2.7.2 Finalising the Proceedings
• 7.2.7.3 Relevant Cases

Key Legislation:

Patents Act:

• s17 Directions to co-owners
• s32 Disputes between applicants etc.

Patents Regulations:

• reg 2.1 Applications by co-owners for directions
• reg 3.6 Requests to make determinations between interested parties
• reg 22.24 Practice and procedure other than for opposition proceedings

Note: This information applies to requests made before, on or after 15 April 2013.  

In this topic:

Requests under sections 17 and 32

Evidence

Physical evidence

Requests under sections 17 and 32

A request under section 17 must comply with the requirements of reg 2.1 - it must be in the approved form (available on the IP Australia website), be accompanied by a notice setting out the facts on which the application is based, and a copy of the application and notice must be served on the other party.

A request under section 32 must comply with the requirements of reg 3.6 - it must be in the approved form (available on the IP Australia website) and have with it a notice stating the grounds on which the request is made. It may also be accompanied by evidence supporting the request.

Following receipt of a request under either section 17 or section 32 the practice and procedure to be followed is determined by the Commissioner in accordance with reg 22.24 and directions to the parties will be made accordingly.

Evidence

Note: As of 15 April 2013, any evidence, and summaries of submissions for the hearing must be filed electronically with IP Australia by means approved by the Commissioner.  

Physical evidence should not be filed unless requested or directed by the Commissioner.

Depending on the nature of the dispute evidence may not be required or relied on. Therefore, once the request has been filed, the parties will be asked to indicate if they wish to file evidence (if evidence has not already been filed).  

A party intending to file evidence will be required to specify the nature and significance of the evidence, and how long they will need to prepare the evidence. A delegate will consider the information, and propose a direction. Where a direction is given for a party to file evidence, the other party will normally be provided with a period in which to file responding evidence. Extensions of time to file evidence will only be granted in exceptional circumstances.

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.