New Zealand is possibly unique in that it provides two opportunities for third parties to oppose a New Zealand patent or application before the national patent office. The first opportunity is pre-grant opposition and the second opportunity is within a year of grant (“belated opposition”).
The deadline for filing pre-grant opposition is 3 months from advertisement of acceptance. The Notice of Opposition is not merely a formal document – it must recite the grounds to be relied upon in the opposition and include details of relevant prior art. If the opponent needs more time to locate relevant prior art, an extension of one month can be obtained, as a matter of course. The extension application must be filed within the initial three month period for opposing.
Opposition to a granted patent is also possible within 12 months of grant. This option is not available to anyone who opposed the application before grant. In other words, two bites of the cherry are not possible.
Belated opposition is also not available where the patentee has already commenced infringement proceedings in a court, except with leave of the court.
What is the difference between the two types of opposition?
The grounds available to the opponents are the same in both types of opposition.
As for procedure, an additional one month extension is not available to file a belated opposition beyond the 12 months provided post-grant. But apart from that, the procedure is identical and therefore the cost of both types of opposition will be the same.
Pre-grant opposition is usually recommended over belated opposition for the simple reason that pre-grant opposition delays the grant of the patent and therefore delays the applicant from bringing infringement proceedings.
Because of the risk of being sued for patent infringement once the patent is granted, belated opposition is not generally recommended over pre-grant opposition. The procedure and cost are much the same for both and hence there is little to be gained by waiting for grant and then opposing. So belated opposition is usually only invoked when the opponent misses the opportunity for pre-grant opposition.
Further articles in this series
This is the first instalment of a series on New Zealand patent oppositions. Stay tuned for further articles, including:
• NZ Patent Oppositions – Why oppose?
• NZ Patent Oppositions – What are the steps?
• NZ Patent Oppositions – Why do I need expert evidence?
• NZ Patent Oppositions – Can I use a foreign expert?