Proposed Australian patent prosecution and opposition rule changes for US Patent Attorneys

by FPA Patent Attorneys

[author: Tom Gumley]

Since 15 April 2012, the date on which Australia’s new patent law came into force, we have been waiting to see the draft regulations that will underpin the operation of patent prosecution and opposition proceedings. These draft regulations are now available, Intellectual Property Legislation Amendment Regulation 2012, Schedule 3 and Intellectual Property Legislation Amendment Regulation 2012, Schedule 6.

The draft regulations are proposed to come into force on 15 April 2013. It is possible that they may yet be amended and the due date for public submissions is 21 November 2012.

Some proposed key changes are as follows:

Patent examination

1. acceptance (allowance) due date to be shortened from 21 months to 12 months from receipt of a first examination report.

2. due date for requesting examination to be shortened from 6 months to 2 months from receipt of a direction from the Patent Office to request examination.

Item 1 would apply to all applications where a request for examination is made on or after 15 April 2013. Item 2 would apply to all directions issued on or after 15 April 2013.

Patent Opposition

3. two categories of opposition to be recognised, namely substantive (opposition to grant of patent or to patent term extension) and procedural (allowance of amendments and extensions of time).

4. all documents to be filed with Patent Office, eliminating current requirement for service by one party on another, and the opportunity for one party to object to late service of documents on another.

5. due date for commencing procedural opposition by filing Notice of Opposition to be 2 months, which would shorten the due date for opposition to amendment by 1 month, and would extend the due date for opposition to extension of time by 1 month.

6. for procedural opposition, the due date for filing an Opposition Statement (which would replace Statement of Grounds & Particulars) to be shortened to 1 month from filing of Notice of Opposition.

7. Patent Office may dismiss opposition if documents not filed on filing of opposition.

8. for substantive opposition, the due date for opponent’s evidence in reply to be reduced from 3 months to 2 months.

9. a higher threshold to be met to obtain extension of time for filing evidence.

10. it would not be possible to file evidence if time for doing so is not extended.

11. for procedural opposition, the Office to be given discretion to direct, on a case-by-case basis the appropriate practice and procedures including directing evidential timeframes.

12. no mechanism to be provided to request leave to submit further evidence.

13. opponent to file summaries of submissions 10 days prior to hearing, and applicant to do same within 5 days.

14. divisional applications could no longer be filed during opposition.

It is proposed that most of the Patent opposition changes would apply to opposition proceedings commenced after 15 April 2013. However, some changes are proposed to apply to opposition proceedings commenced before this time, including those changes at items 4, 9 and 13.

We will cover these proposed changes in more detail in future articles. In the meantime, please read our Guide to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.


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

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.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

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.


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 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:

- 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.