We have a highly experienced team of patent attorneys with specialist skill sets in conducting patent opposition proceedings before the Australian and New Zealand Patent Offices, particularly in life sciences, agribusiness, electrical engineering and IT. For appropriate cases we work closely with Herbert Smith Freehills’ patent litigators, enabling our clients to obtain the best possible outcomes, particularly should a matter be appealed, or commence in Court.

What happens if the application is opposed?

These comments relate to opposition to the grant of a patent or to an extension of term request before the Australian Patent Office.  Different procedures apply to other oppositions, including opposition to an amendment.

After a complete application for a standard patent is accepted and advertised by the Australian Patent Office, the grant of a patent on the application can be opposed by others. This happens on a small percentage of applications. The opposition process is initiated by filing a notice of opposition, which must be lodged at the Patent Office within three months of the advertised acceptance. The opponent must then file a statement setting out the basis for the opposition, including details and copies of material prior art.

The opponent then has an opportunity to file evidence in support of the opposition. The evidence usually takes the form of statutory declarations by experts suitably qualified in the relevant field.  These experts provide evidence on the state of common general knowledge or may provide their interpretation of the prior art so that the hearing officer will be in a position to assess inventive step.

Once the evidence in support filed, the patent applicant has an opportunity to file evidence in answer to the opponent’s evidence.  Such evidence may comprise another expert’s contrary views to those of the opponent’s experts. After that, the opponent has a final opportunity to file evidence in reply to the applicant’s evidence.

When the evidence is complete, the case will be heard by the Patent Office before a hearing officer, usually in Canberra. The hearing is usually based on the written evidence and it is unusual for experts to appear and give oral evidence at the hearing. The hearing officer usually issues a written decision some months after the hearing. It is possible to appeal that decision to the Federal Court.