In our continuing series of articles on New Zealand patent oppositions, we summarise the procedure. In our earlier article NZ Patent Oppositions – when can I file?, two different types of oppositions are described and the timeframes for opposing.
The following steps apply to both types of opposition:
1. Notice of Opposition
Opposition is commenced by filing a Notice of Opposition. This form is required to recite the grounds relied upon and details of prior art. In pre-grant opposition, an extension of one month may be obtained for filing the Notice of Opposition.
2. Statement of Case
The Notice of Opposition may be filed with a Statement of Case which sets out the particulars of the case to be pursued in the opposition. Typically, the Statement does not include detailed arguments or the case law relied upon.
Where the opponent is not in a position to file the Statement of Case with the Notice of Opposition, an extension of time may be obtained.
3. Applicant’s Counterstatement
Within two months of receipt of the Notice of Opposition and Statement of Case, the applicant is required to file a Counterstatement. If the applicant does not file a Counterstatement then the application will lapse.
The intention of the Counterstatement is to identify the issues in dispute between the parties. In the Counterstatement, the applicant is therefore required to either accept or deny the opponent’s allegations or file amendments. However, applicants typically deny all the opponent’s allegations seldom reducing the issues in dispute.
When the applicant files amendments to the specification, the proceedings are suspended while the amendment application is passed to an examiner. The examiner considers the amendment for compliance with the New Zealand Patents Act and Regulations.
Once the amendments are allowed, the case is restarted.
Within two months of receiving the Counterstatement, the opponent may file evidence to support the case. Typically, such evidence includes statements by expert witnesses attesting to the state of common general knowledge in the field. Such evidence is essential in a case of obviousness.
Within two months of receiving the opponent’s evidence, the applicant may file evidence in support of its case. Such evidence, if filed, will generally rely on expert testimony to refute the opponent’s evidence.
Within two months of receiving the applicant’s evidence, the opponent may file evidence strictly in reply to matters referred in the applicant’s evidence.
6. Extensions of Time
While the time period allowed for each of the evidentiary stages is two months, extensions of time are available. Typically, the New Zealand Patent Office considers it reasonable to allow extensions of up to four months for obtaining substantive evidence. This gives a total time of 6 months to both the opponent and the applicant for preparing their substantive evidence. Shorter periods of extension are allowed for other stages.
Extension applications should give a detailed account of:
the reasons why it has not been possible to complete the required action within the required time (including demonstrating that there has been no lack of diligence in evidence preparation)
the present status in completing the required action
what actions are outstanding to meet the deadline now sought
an anticipated timetable
7. Settlement Negotiations
If the parties are undertaking meaningful negotiations then the case may be placed in abeyance for a period of up to 6 months. This requires confirmation from both sides that negotiations are occurring.
Once the evidentiary stages have been concluded, the matter is set down for a hearing and both parties have an opportunity to be heard.
The decision of the New Zealand Patent Office may be appealed. The appeal is based on evidence filed in the patent office proceedings. For an enlarged copy of the proceedings please see: Patent Office Proceedings
Further articles in this series
This is the third instalment of a multi-part series on New Zealand patent oppositions. Stay tuned for further articles: