Patent Oppositions in Australia: Adhering to the procedure

A patent opposition can be a complex and time critical issue, whether you are commencing the opposition, or your patent application is being opposed. It’s crucial to fully understand the process by which an opposition occurs in the relevant jurisdiction.

In Australian patent oppositions, the procedure, timeline and timeframe of each step must be strictly followed.

The key steps for an opposition are:

 1. Filing a Notice of Opposition (Opponent files);

Concept of solution and domino effect. Slightly de-focused and close-up shot. Selective focus.

 2. Filing a Statement of Grounds and Particulars (Opponent files);

 3. Filing Evidence in Support (Opponent files);

 4. Filing Evidence in Answer (Applicant files);

 5. Filing Evidence in Reply (Opponent files);

 6. Submissions (both the Opponent and Applicant); and

 7. The Hearing.

The Evidence in Answer and Evidence in Reply stages should be restricted to evidence in relation to rebutting the Evidence in Support and Evidence in Answer, respectively. The Evidence in Reply and Evidence in Answer should be confined to rebutting previous evidence to avoid drawn-out oppositions.

In a recent decision (Zoetis Services LLC v Boehringer Ingelheim Vetmedica GmbH [2022] APO 72), the importance of adhering to the procedural steps was highlighted. In this case, when filing Evidence in Support, the Opponent provided evidence from a veterinarian stating that they had performed the claimed invention before the priority date. However, the Opponent and veterinarian provided no evidence to support this assertion. The Applicant filed Evidence in Answer which noted the lack of supporting evidence.

The Opponent subsequently filed Evidence in Reply to address the lack of evidence in the Evidence in Support. The evidence supplied by the Opponent in the Evidence in Reply contained a Declaration from a second veterinarian who alleged that they had performed the claimed invention before the priority date. The evidence included medical records with reports and discharge instructions to support this position.

The Applicant contested the admissibility of the Evidence in Reply on the basis that it was not strictly in reply to the Evidence in Answer. The Applicant contended that the evidence from the second veterinarian should not be considered on this basis. Ultimately, the Delegate found that the evidence from the second veterinarian was not properly made in reply to the Evidence in Answer and should have been presented in the Evidence in Support.

However, under Regulation 5.23 of the Patent Regulations 1991, the Delegate may consult a document that they consider it to be relevant to the opposition. Ultimately, the Delegate used their discretion in allowing the evidence from the second veterinarian as it had ‘substantial probative value’ to the opposition. It should be noted that the Applicant was provided with an opportunity to respond to the evidence of the second veterinarian.

Another strategy (depending on the other evidence tendered) that the Applicant could have taken is to simply not respond to the perceived deficient Evidence in Support. By not responding to the Evidence in Support, the Opponent is not provided with an opportunity to rectify the deficiency (like in the present case). However, care should be taken before opting for this strategy.

If you have any questions in relation to the above article, please do not hesitate to get in contact with us. We will be pleased to provide strategies for patent oppositions, patent protection and/or discuss any aspects of this article further.

David Tso
written by David Tso, Senior Associate