It’s Not Over Until It’s Over: Appeals from Patent Opposition Decisions to the Federal Court

A decision of the Commissioner of Patents following an opposition to the grant of a patent is not necessarily the final word in the dispute. 

Section 60(4) of the Patents Act 1990 (Cth) gives either party a right to appeal to the Federal Court from a decision of the Commissioner following an opposition to the grant of a standard patent. Such an appeal is an exercise of the Court’s original jurisdiction and is conducted as a hearing de novo^[1].

Parties are entitled to adduce new evidence and advance arguments that were not put before the Commissioner^[2]. Importantly, evidence that was before the Commissioner cannot be relied upon in the Federal Court without leave^[3]. Although the Commissioner’s findings may be taken into account, they carry limited weight in the appeal process^[4]. The opponent continues to bear the onus of establishing that the patent application, if granted, would be invalid. 

Accordingly, the Federal Court determines the matter afresh on the evidence before it^[5]. Where there is no evidence before the Court capable of supporting a ground of opposition, the Court cannot simply uphold the Commissioner’s decision. 

Two recent appeals brought by patent applicants following adverse opposition decisions demonstrate the practical significance of these principles, particularly where neither the Commissioner nor the opponent actively participates in the appeal.  

The Opponent Must Prove Its Case on Appeal 

In Provectus Algae Pty Ltd v v2food Pty Ltd ^[6], v2food was the applicant for Australian Patent Application No. 2021247417, entitled Food Colouring Agents (the “417 Application”). Provectus opposed the grant of the application, succeeding only on the ground of lack of inventive step. The Commissioner’s decision was based on evidence adduced during the opposition proceedings. 

In v2food Pty Ltd v Provectus Algae Pty Ltd^[7], the patent applicant appealed the decision under s 60(4), raising a number of criticisms of the delegate’s reasoning on inventive step. The Commissioner elected not to appear, and the respondent opponent did not file any evidence in the appeal. 

In those circumstances, the appeal succeeded because the respondent failed to discharge its onus of establishing the ground of opposition, requiring expert evidence on lack of inventive step before the Court. The Commissioner’s decision was set aside, the opposition was dismissed, and the 417 Application was permitted to proceed to grant. 

The Court May Consider the Commissioner’s Findings 

A different issue arose in Commonwealth Scientific and Industrial Research Organisation v Urrbrae Foods Pty Ltd^[8]. 

CSIRO was the applicant for Australian Patent Application No. 2017292900, entitled High Amylose Wheat – III (the “AU’900 Application”). The opposition succeeded solely on the ground that the claims lacked support in the specification^[9].

On appeal, neither the opponent nor the Commissioner participated. Beach J reviewed the Commissioner’s decision and identified an apparent evidentiary gap in the material relied upon to establish the lack-of-support ground.  Beach J subsequently invited the appellant to adduce evidence that had not been before the delegate. Based on that evidence, Beach J concluded that the specification supported and enabled the skilled person to perform the invention across the claims. The opposition was therefore dismissed and the AU’900 Application was permitted to proceed to grant. 

On discussing the approach by Beach J, it was observed by Perram J in v2foods: 

“The delegate’s conclusion that the patent was invalid therefore flowed from a lacuna in the patent applicant’s evidence rather than an acceptance of anything in the opponent’s evidence. In that circumstance, the lacuna remained on appeal to this Court even though neither the opponent nor the Commissioner took part.”^[10]

The decision illustrates that an unopposed appeal from an adverse opposition decision will not necessarily result in the automatic dismissal of the opposition. While the Court may have regard to the Commissioner’s findings, it may also seek further evidence to address deficiencies that affected the delegate’s reasoning, particularly where the issue arises from the patent specification itself. 

Key Lessons 

The decisions in v2food and CSIRO reinforce a fundamental principle of appeals under s 60(4). Although the Federal Court may consider the Commissioner’s findings, it must determine the matter afresh on the evidence adduced before it. In the absence of evidence supporting the opposition, the Commissioner’s decision alone will generally be insufficient to sustain a finding that the patent application should be refused. 

For patent applicants, these decisions highlight the importance of considering an appeal under s 60(4) following an unsuccessful opposition outcome. Because the appeal is conducted de novo, the opponent must establish the grounds of opposition before the Federal Court, regardless of its success before the Commissioner of Patents. Where the opponent fails to adduce evidence or otherwise participate in the appeal, the Commissioner’s decision may be overturned. However, that result should not be assumed. Where the appeal concerns issues such as support or sufficiency that are apparent from the specification itself, the Court may require further evidence before dismissing the opposition. In CSIRO this was to the applicant’s benefit as the relevant issue received proper judicial consideration before the opposition was dismissed. 

For opponents, the cases serve as a reminder that success before the Commissioner of Patents may not bring the dispute to an end. Where the applicant appeals, the opponent must effectively prove its case again before the Federal Court. In v2food , the absence of participation by the opponent left the Court without a sufficient evidentiary basis to uphold the opposition. 

That said, a decision not to participate in an appeal may itself be a strategic and commercially rational one. The costs associated with Federal Court litigation may outweigh the benefits of defending an opposition, particularly where the patent claims have already been narrowed during the opposition process. An opponent may also take the view that an opposed patent application that is allowed to proceed to grant absent further judicial review remains vulnerable to a future validity challenge. 

The message emerging from these decisions is clear. A successful opposition before the Commissioner is not necessarily the closing chapter in a patent dispute. An appeal under s 60(4) is not a review of the Commissioner’s reasoning but a hearing de novo, in which the Federal Court determines the matter afresh on the evidence before it.  

^{[1] Commonwealth Scientific and Industrial Research Organisation v Umbrae Foods Pty Ltd [2025] FCA 1591, referring to Meat & Livestock Australia Ltd v Cargill, Inc [2018] FCA 51 at [6] – [8]} 

^{[2] EI Du Pont De Nemours & Co v ICI Chemicals & Polymers Ltd (2003) 128 FCR 392.}   

^{[3] Commonwealth Scientific and Industrial Research Organisation v Umbrae Foods Pty Ltd [2025] FCA 1591, referring to Meat & Livestock Australia Ltd v Cargill, Inc [2018] FCA 51 at [6] – [8]}  

^{[4] Commonwealth Scientific and Industrial Research Organisation v Umbrae Foods Pty Ltd [2025] FCA 1591, referring to Meat & Livestock Australia Ltd v Cargill, Inc [2018] FCA 51 at [6] – [8]} 

^{[5] European Community v Commissioner of Patents [2006] FCA 706.}  

^{[6] [2026] APO 1} 

^{[7] [2026] FCA 436} 

^{[8] Commonwealth Scientific and Industrial Research Organisation v Umbrae Foods Pty Ltd [2025] FCA 1591} 

^{[9] [2026] APO 12} 

^{[10] v2food Pty Ltd v Provectus Algae Pty Ltd [2026] APO FCA 436 at [10]} 

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