7.8.7.1 Delegates raising new grounds

Also in this Chapter:

• 7.8.1 Setting Down Hearings

• 7.8.2 Hearings Procedure

• 7.8.3 Ex Parte Hearings

• 7.8.4 Natural Justice and Bias

• 7.8.5 Principles of Conduct

• 7.8.6 Decisions

• 7.8.7 The scope of opposition proceedings

• 7.8.7.2 Further hearings

• ​​​​​​​7.8.8 Final Determinations

• 7.8.9 Quality

• 7.8.10 Appointment of Hearing Officers and Assistant Hearing Officers, Hearing Officer Standards Panel, Hearing Officer Delegations

Key Legislation:

Patents Act:

• s59 Opposition to grant of standard patent  

• s60 Hearing and decision by Commissioner

   

Patents Regulations:

• reg 5.23 Commissioner may consult documents

• reg 5.12 Practice and procedure

• reg 22.24 Practice and procedure other than for opposition proceedings

On this page

• The discretion to raise new grounds under s60(3)

• The discretion to raise new ground/issues in other matters

The discretion to raise new grounds under s60(3)

When a standard patent is opposed, the Commissioner must decide the opposition in the way set out in the regulations.  When deciding the opposition, the Commissioner is not limited to the grounds raised by the opponent. The Commissioner may consider any ground that could be used as a ground of opposition, even if the opponent did not rely on it.   It is noted that this not a mechanism for the opponent to raise new grounds.

Before exercising this discretion, the Commissioner must give parties a fair opportunity to present their case.  This includes raising issues as early as possible and giving parties an opportunity to propose the time required to respond.  This may also include an oral hearing or another reasonable opportunity to be heard which may simply be part of the substantive hearing.

Principles relevant to the exercise of this discretion include:

• Whether the new ground is likely to have a material impact on the overall outcome of the decision.

• Whether the proceeding is the appropriate forum for resolving the issue raised by the new ground. For example, considering the circumstances of the opposition, would be it be appropriate to deal with the issue via re-examination?

• Whether an adequate opportunity to be heard can be given to the applicant on the new ground, including any opportunity needed to provide evidence or submissions.

• Whether consideration of the new ground is necessary to make or support further findings in the matter.

   

In some cases, the exploration of new grounds may intersect with undertaking a process under Reg 5.23. See 7.5.3 Evidence Filed Out of Time.

The discretion to raise new grounds/issues in other matters

The Commissioner considers that principles of natural justice implemented via general discretionary powers under regulations 5.12 or 22.24 may provide a means to raise new grounds/issues analogously to s60 in disputes other than s59 oppositions (see for example Permaform International Pty Ltd v CSR Building Products Limited [2022] APO 66).