7.8.8.1 Overview of Proceedings

Also in this Chapter:

• 7.8.8.2 Applicant Does Not Propose Amendments
• 7.8.8.3 Opponent Withdraws the Opposition

Key Legislation:

Patents Act:

• s61 Grant of standard patent  
• s216 Exercise of discretionary power by Commissioner  

Patents Regulations:

• reg 6.2 Prescribed period: grant of standard patent
• reg 22.22 Exercise of discretionary powers by Commissioner

In this topic:

Opponent Does Not Wish to be Heard​​​​​​​

Where a decision finds certain defects in an application, the applicant will usually be provided with an opportunity to propose amendments to address these. In this situation, a final decision or determination is required to conclude proceedings, unless the opponent withdraws the opposition.

Once the amendments have been allowed, the matter is set for final determination and the parties provided with an opportunity to be heard. The reason for this process is that in general, the criteria for allowability of amendments do not correspond to the grounds of opposition. Thus, the amended specification may be in a form such that it could not properly be said to have been the subject of argument on the basis of one or more of the grounds of opposition.

Any resulting hearing is conducted under the provisions of s216 and reg 22.22. The original hearing officer will conduct the final determination hearing, unless there are extenuating circumstances which make this impossible, and issue a formal decision.

The issues to be considered in a final determination are whether or not the amendments to the specification overcome the findings in the original decision, and whether the amendments introduce any new deficiencies.  Matters that were decided in the earlier decision have been decided once and for all, and are not open to challenge in the final determination (see Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119 and Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 49 & [2002] FCA 1233).  New deficiencies are grounds of opposition that arise solely from the amendment of the specification.

The final determination is itself a decision that is capable of appeal.

Note: A “final determination” is not necessarily the only opportunity the applicant has to rectify any defects. If the hearing officer considers that the applicant has genuinely attempted to overcome the defects, the applicant is likely to be provided with another opportunity to amend.

Opponent Does Not Wish to be Heard

If an opponent does not want to be heard (the usual case), the hearing officer will consider whether the amendments overcome the grounds of objection. If the application is in order, the hearing officer should write a file note to that effect and direct the application to be granted. Note that under s61(2) and reg 6.2(b)(ii), the hearing officer should give a date by which grant is to occur, usually a date 1 month from the date of the final determination. If the hearing officer finds certain grounds of objection (still) exist, the hearing officer may either:

• provide the applicant with a further opportunity to amend; or
• if the circumstances justify it, initiate action to refuse the application.

In some circumstances, an opponent may not wish to be heard, however still provides written submissions for the hearing officer to consider in the final determination. In this situation, the hearing officer should write a letter to both parties that addresses the submissions and either directs the application to grant or, if the submissions are persuasive, invite further amendments from the applicant. However, where an issue is particularly complex, it may be appropriate to write a formal final determination decision.