It is general practice to record oral hearings, including where a party appears by telephone or video conference. The hearing officer should remind the parties of this at the commencement of the hearing and indicate when recording starts and finishes. Copies of the recording can subsequently be requested from Oppositions & Hearings in COG.

The hearing officer will also:

clearly identify what the hearing is in respect of;
obtain, for the record, the representations of the parties;
raise any matters that need clarification before the hearing commences; and
in substantive oppositions, clearly identify what the parties consider to be the specification being considered, and in particular the claims of the specification (there have been occasions where a party has prepared for the hearing on the basis of the wrong set of claims).

The substantive hearing follows thereafter.

Presentation by Parties

The order of presentation is a matter within the discretion of the hearing officer. As it is incumbent on a party initiating an action to prove their case, that party will usually have the right (or obligation) of first address. In general, where the Commissioner has considered the matter and would have proceeded to act on it but for the action, the party initiating that action is the opponent, informant or objector, otherwise the person initiating the action is the person who made the relevant request leading to the action.

If the parties are in agreement that a person other than as identified above should have first address, the hearing officer can consider whether the normal order should be reversed.

In presenting a case, a party may read the evidence, summarise or highlight particular points of interest or refer to case law. It is not necessary for a party to “read in” evidence and the practice is discouraged. If a party is reading the evidence in, hearing officers are at liberty to read ahead and indicate when appropriate that they have read that paragraph in order to expedite the process.

All parties have the right to speak without interruption, and the right of reply and response until they are satisfied their case has been fully presented. An exception to this may occur during reading or presentation of the main evidence for one party, where counsel or the attorney for the other party wishes to object to portions of that evidence, e.g. on the basis that those portions are so vague as to fail to establish any facts, or they are asserting conclusions of law. The hearing officer may rule on the point at once, or defer such ruling to be included in a written decision.

During the presentation the hearing officer may ask questions to clarify the submissions.

Note: There is no requirement that a hearing officer rule immediately on any point, unless the ruling is essential to the continuance of the proceedings. In general, hearing officers should reserve their decision on all substantive matters.

Opponent’s Submissions, Matters Outside Statement of Grounds and Particulars

The opponent's submissions should be confined to matters within the scope of the statement of grounds and particulars. As indicated in 7.4.2 The Statement of Grounds and Particulars, the opponent is bound by that statement, and confined to the issues raised therein. At the hearing, the hearing officer will not monitor compliance, but will rule on the matter when and if the applicant objects.

Note that the Commissioner as a tribunal is not bound by the court rules of evidence. In addition, the primary role of the opposition is to determine the validity of patent. Given this, the Commissioner has broad powers under s60(3) and s101N(3) to decide an opposition on grounds whether they were raised by an opponent or not and, under reg 5.23, to consult a document which had not been raised by the opponent. In this context, technical issues such as whether the statement does (or does not) contain a particular argument, or whether the evidence in reply is (or is not) strictly in reply, are not helpful. As noted in the office decision of RGC Mineral Sands Ltd v Wimmera Industrial Minerals [1999] APO 79, it is not appropriate to shut out critical material which is determinative of the opposition on a technical point of evidence (see also Sonus Pharmaceuticals, Inc v Alliance Pharmaceutical Corp and Schering AG [2001] APO 13 and EWT Trade and Business Consultants NZ Ltd v Quickcut Pre Press Network Pty Ltd [2006] APO 11).

Instead, the hearing officer must consider whether the argument raised outside the statement of grounds and particulars is a significant issue of validity and/or whether evidence in reply is significant as a matter of fact. If the material is significant, the hearing officer should consider it in determining the matter, but ensure that the other party has had a reasonable opportunity to respond to the material in accordance with the principles of natural justice. This may mean that a party will have the opportunity to file evidence or submissions after the hearing. Such material must be provided to the party with the option to respond if necessary.

Often the true significance of the extra material will not be apparent until after the hearing officer starts to write the decision. In this case, the hearing officer will advise the parties that the material will be reviewed after the hearing and if it is relevant to the determination, will provide the parties with an opportunity after the hearing to address the material. This will usually be by submissions or evidence, however the hearing can be reconvened if the parties or the Commissioner consider it necessary.

Views of Hearing Officer

During the hearing, the hearing officer should make known to the parties their views on the issues, problems and technical difficulties with the case (see Vakauta v Kelly (1989) 87 ALR 633 at 635). This will ensure that the parties are fully aware of the case that they have to answer, and that the hearing officer fully understands the case being put by the parties. It is not necessary to obtain agreement with the hearing officer’s point of view.

Costs

At the end of the hearing, if the parties have not raised the matter of costs, the hearing officer will seek submissions on costs.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023