7.3 Directions

Also in this Chapter:
 

• 7.1 Role and Powers of the Commissioner in Hearings
• 7.2 Oppositions, Disputes and other proceedings-Procedural summaries
• 7.4 Opposition Documents, Requirements and Amendments
• 7.5 Evidence
• 7.6 Production of Documents, Summonsing Witnesses
• 7.7 Withdrawal and Dismissal of Oppositions
• 7.8 Hearings and Decisions
• 7.9 Costs
• 7.10 The Register of Patents
• 7.11 Extensions of Time and Restoration of Priority
• 7.12 Extensions of Term of Standard Patents Relating to Pharmaceutical Substances
• 7.13 Orders for Inspection of non OPI Documents
• 7.14 Appeals AAT, ADJR, The Courts
• 7.15 Computerised Decisions

Sub-chapters:

• 7.3.1 Directions in Opposition Proceedings
• 7.3.2 Directions that an Application Proceed in Different Name(s) - Section 113

Key Legislation:

Patents Act:

• s17 Directions to co-owners
• s55 Documents open for public inspection
• s56 Certain documents not to be published
• s113 Persons claiming under assignment or agreement

Patents Regulations:

• reg 4.3 Prescribed documents: public inspection
• reg 5.12 Practice and procedure
• reg 5.22 Commissioner may give directions
• reg 22.23 Written submissions and oral hearings
• reg 22.24 Practice and procedure other than for opposition proceedings

Related Chapters:

• 7.2.7 Sections 17 & 32 - Disputes Between Applicants and Co-Owners
• 7.2.7.2 Finalising the Proceedings
• ​​​​​​​7.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A
• 7.2.8.1 Procedure - Requests for the Commissioner to Make a Determination of Entitlement
• 7.6.5 Complying with the Notice or Summons; Reasonable Excuses
• 7.13 Documents not OPI - Orders for Inspection

In this topic:

Relevant Legislation

The Act

The Regulations

Overview​​​​​​​

Relevant Legislation

The Act

The Regulations

Overview

A number of provisions in the Patents Act and Regulations provide the Commissioner with the power to make directions in certain circumstances. These are summarised below.

The Commissioner may make directions for the conduct of opposition proceedings under regs 5.12 and 5.22 (see 7.3.1 Directions in Opposition Proceedings).  In hearings other than opposition proceedings, the practice and procedure is determined by the Commissioner in accordance with reg 22.24 and the parties directed accordingly (see 7.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A; and 7.2.8.1 Procedure - Requests for the Commissioner to Make a Determination of Entitlement).

Regulation 22.23 provides that the Commissioner may make directions regarding written submissions in hearings proceedings (see 7.2.7.2 Finalising the Proceedings, 7.2.8.2 Finalising the Request).

Section 17 provides that the Commissioner may give directions to settle disputes between co-owners of a patent as to dealings with the patent, the grant of licences under it or the exercise of a right under section 16.  For more information see 7.2.7 Sections 17 & 32 - Disputes Between Applicants and Co-Owners).

Under section 113 the Commissioner may direct that a patent application proceed in a different name or that a joint applicant be recorded.  See 7.3.2 Directions that an Application Proceed in Different Name(s) - Section 113.

Under reg 4.3(2)(b) the Commissioner may direct that a document is not open for public inspection; and under section 56 may order inspection of a document.  See 7.13 Documents not OPI - Orders for Inspection or 7.6.5 Complying with the Notice or Summons; Reasonable Excuses.