Opposition Proceedings – Procedural Changes

by FPA Patent Attorneys
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Significant changes to Australian patent opposition proceedings arise under the new Regulations to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into force on April 15, 2013.

Some of the key procedural changes include:

  • eliminating service of documents
  • eliminating notice of intention to serve evidence in reply
  • requiring certain prior art documents to be filed with the opposition statement
  • eliminating further evidence provision
  • restricting divisional filings during opposition proceedings.

The explanatory memorandum explains that the policy objectives are to remove an alleged complexity relating to service of evidence, to create greater transparency and certainty for the public, and to reduce unnecessary delays in determination of a dispute.

There have been timing changes to opposition proceedings discussed in Opposition Proceedings – timing changes, which also aim to reduce delays in opposition proceedings.

The key procedural changes are discussed in more detail below.

(a) Eliminating service of evidence – parties only need to file evidence with the Patent Office

Under pre April 15, 2013 law, parties were required to serve evidence and related documents on each other by a due date and to file a copy of served documents in the Patent Office as soon as practicable thereafter.

Under the new Regulations, parties only need to file evidence and related documents with the Patent Office. The Patent Office will give a copy of the documents to the relevant party give that party notice that the evidence has been completed.

This rule change is intended to obviate disputes between parties about the date of service, and consequently whether a deadline has been met.

(b) Eliminating notice of intention to serve evidence in reply

Under pre April 15, 2013 law, an opponent that intended to serve evidence in reply had one month from the applicant’s service of evidence in answer to:

  • serve evidence in reply, or
  • file a notice of intention to serve evidence in reply.

If the opponent filed the notice of intention, the opponent’s evidence in reply was due 3 months from the date of service of the applicant’s evidence in answer.

The new Regulations eliminate the requirement to file a notice of intention. The opponent’s evidence in reply is now due 2 months from the date the Patent Office notifies the opponent that all the applicant’s evidence in answer has been filed.

(c) Certain prior art documents must be filed with the opposition statement

The statement of grounds and particulars is to provide a summary of the opponent’s case against grant of patent and to define the issues of the opposition.

Under pre April 15, 2013 law, an opponent had merely to identify prior art documents that it intended to rely upon in particulars, and copies of the prior art were not required until service of evidence.

The new Regulations require that prior art documents referred to in the statement of grounds and particulars – excluding publicly available patent literature – must be filed with the opposition statement. If an opponent fails to comply, the Commissioner has the discretion to dismiss the opposition.

(d) Eliminating further evidence provision

Under pre April 15, 2013 law, parties could file a request to serve further evidence – provided they had already served some evidence – at any time before the conclusion of an opposition.

Under the new Regulations, there is no provision to file a request to serve further evidence. The intention is to reduce delays in opposition proceedings.

Further evidence – Commissioner’s power discretionary

Under pre April 15, 2013 law, the Commissioner was obliged to consider whether it was appropriate, in all the circumstances, to exercise its discretion to allow the service of further evidence. To do so, the Commissioner had to give proper consideration to all relevant considerations, which included:

  • explanation of delay
  • the public interest – including the nature and significance of the evidence sought to be served
  • the interests of the parties.

Accordingly, the Commissioner had the power to refuse a request to serve further evidence which was of questionable value and which was not crucial to the outcome of an opposition.

If the nature of the evidence sought to be served was significant, and the Commissioner considered that the public and parties’ interests in determining an opposition promptly was outweighed by the competing consideration of determining a serious opposition on its merits, the Commissioner would typically grant the request.

Restricted alternative to further evidence

Under the new Regulations, the Commissioner may consult a document that:

  • is relevant to the opposition
  • has not previously been filed as part of the opposition proceedings, and
  • is available to the Patent Office.

The explanatory memorandum to the new Regulations explains that parties may file a document at any stage to make the document ‘available’ to the Patent Office.  However, it is not clear whether a ‘document’ is limited to a prior art document or may include a document setting out ‘further’ evidence, ie, whether a declaration is admissible under this provision.

The Commissioner has discretion whether to consider the document and whether to rely on the document. If the Commissioner proposes to rely on the document, the Commissioner must provide the parties with an opportunity to submit evidence and make representations about the document.

(e) Restricting divisional filings during opposition

Divisional deadline = opposition deadline

Under the new Regulations, the deadline for filing a divisional application is shortened to 3 months from publication of acceptance of the parent application, which is the same as the opposition deadline. Under the pre April 15, 2013 law, it was usual practice for an opponent to file its notice of opposition late on the last day so as to avoid giving notice to the applicant of the opposition before the deadline for filing a divisional application with claims to an invention not within the scope of the claims of the parent application. The change to the final deadline for filing divisional applications will reinforce this practice.

Impact

It is no longer possible for an applicant to create a fall back position for a narrower embodiment of their invention if a broader claim set in the parent application is opposed.

Also, if it becomes apparent during opposition proceedings that an invention does not satisfy the inventive step threshold but may satisfy the innovative step threshold, the applicant is no longer able to file a divisional innovation patent application to pursue the invention.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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