Opposition Proceedings – Timing Changes

by FPA Patent Attorneys
Contact

The new Regulations to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into force on 15 April 2013 aim to reduce delay in opposition proceedings.

This is to be achieved by:

  • providing time limits dependent on whether an opposition is classified as a ‘substantive opposition‘ or a ‘procedural opposition’;
  • restricting the grounds for extension of time applications and changing the extension application procedure; and
  • introducing new deadlines for pre-hearing submissions.

These new changes are discussed in more detail below.

What is the difference between a ‘substantive opposition’ and a ‘procedural opposition’?

The new Regulations split opposition proceedings into two categories; namely:

  • substantive oppositions which include oppositions to the grant of a patent and oppositions to the grant of an extension of term of a patent relating to a pharmaceutical substance; and
  • procedural oppositions which includes oppositions to amendments, extensions of time  and grants of a licence.

What are the new time limits for oppositions?

The new time limits depend on whether the opposition is a substantive opposition or a procedural opposition.

Procedural oppositions

Shorter time limits apply for procedural oppositions. The deadline to file the Notice of Opposition is 2 months from advertisement of a relevant change in the status of an application. The Statement of Grounds and Particulars is due 1 month after the Notice of Opposition is filed. The Commissioner has discretion to set the time limits for other steps in procedural oppositions.

Substantive Opposition

As shown in the diagrams below, procedure for substantive oppositions has been shortened slightly. The period for submitting evidence in reply will be reduced from 3 months to 2 months.

How will applications for an extension of time change?

The main timing change comes as a result of tighter regulation of the grounds on which an extension of time application can be granted.

Under the pre 15 April 2013 Regulations (which have now been repealed), the Commissioner had a broad discretion to grant extensions of time, which was seen to unnecessarily prolong the time limits for filing evidence.

The new Regulations are designed to restrict the number of applications which are allowed. Specifically, the person requesting an extension will need to satisfy the Commissioner that:

  • the person has made reasonable efforts to comply with the time limit;
  • the person has acted promptly and diligently but has been unable to ensure that the evidence is filed within the time limit; or
  • exceptional circumstances warrant the extension.

The changes make it much more difficult to obtain an extension of time, meaning that oppositions proceedings will be shorter and involve more intense periods of evidence preparation.

Another change under the new Regulations is that no short “grace period” is available. Specifically, under the pre 15 April 2013 Regulations, when issuing a notice that an extension of time application had been refused, the Commissioner had a discretion to grant a short extension to allow a party to file evidence it had immediately available.

Under the new Regulations, extension of time applications must be made before the relevant submission deadline so that, in the event of the application being refused, a party will still have time to file any evidence it has already obtained before the deadline.

What is the deadline for pre-hearing submissions

The new Regulations also set out a new deadline for filing pre-hearing written submissions. Opponents must file their submissions 10 days prior to hearing, while applicants must file 5 days before the hearing.

This ensures that the hearing officer receives submissions in advance of a hearing. This change is intended to facilitate the hearing officer’s preparation for the hearing, as submissions often narrow the matters of contention between the parties.

The Commissioner will be able to sanction parties who fail to comply with the timeframes for filing their submissions. This sanction would be by way of consideration of any costs awarded between the parties.

 

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.

© FPA Patent Attorneys | Attorney Advertising

Written by:

FPA Patent Attorneys
Contact
more
less

FPA Patent Attorneys on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!