7.7.2 Dismissal of an Opposition

The Patents Act 1990 includes provisions to deal with unsubstantiated oppositions. The Commissioner may dismiss an opposition on the request of the applicant or on the Commissioner’s own initiative.

The relevant provision for dismissal of an opposition is regs 5.17 and 5.18.

The principles of law developed for dismissal of an opposition under reg 5.5 apply for regs 5.17 and 5.18.

An opposition may be unsubstantiated even if it requires argument to establish that the opposition should be dismissed. The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident.

See Les Laboratoires Servier v Apotex Pty Ltd[2008] APO 11 at [18]. See also 7.7.2.3 Reasons for Dismissal.

The assessment of whether a reasonable prospect of success exists will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if the opposition has reasonable prospects of success.

An application for dismissal of an opposition should normally be in respect of the whole opposition.

The Commissioner may dismiss a particular ground of opposition (see for example L'Air Liquide, SA pour L'Etude et L'Exploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd[1992] APO 1; 24 IPR 27). However, the Commissioner should not dismiss a ground of opposition merely because it is not supported by some of the particulars (Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd[1992] APO 39; 24 IPR 368).

Where a ground of opposition has been dismissed, the opposition will proceed as if that ground of opposition is not included in the statement of the grounds of the opposition.

The statement of grounds and particulars cannot be amended while an application for dismissal of the opposition is being considered. If the Commissioner decides to dismiss the whole opposition, the opposition is concluded and the opponent cannot subsequently amend the statement of grounds and particulars.

The relevant provision is reg 5.16(3)(a).

A hearing officer’s decision with respect to dismissal of an opposition is subject to review by the Administrative Appeals Tribunal under reg 22.26(2)(iii).