This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.
What is it?
After the publication of acceptance in the Australian Journal of Patents, there is a 3-month window before the patent is ‘granted’. In this intervening period, anyone can challenge the decision to grant the patent by making a formal objection, known as an opposition, to IP Australia.
There are a variety of reasons for an opposition, however the most common are when someone else believes that your invention is identical or very similar to another patent (and therefore isn’t new and inventive), or that the patentee isn’t the true owner of the invention.
Hearings can be heard either by written submissions, or as an oral hearing. Although the hearings are relatively informal (compared to court proceedings), and oral and written hearings vary slightly, in both cases you and the other party will both have an opportunity to argue your cases by reference to the law and evidence. You may also elect to be represented by a patent attorney or other legal professional.
What are the benefits?
Patent oppositions provide a moderately cost-effective mechanism to challenge the validity of an Australian patent application. Additionally, the oppositions process is adversarial, meaning that you will have the opportunity to provide evidence and refute or reply to evidence provided by the opposition regarding the legal and/or factual arguments directed against the patent.
Additionally, the oppositions process takes place prior to the grant of the patent, potentially reducing the risk of commercial disputes arising from the grant of the patent.
What are the risks?
- If your opposition action is unsuccessful and the patent is granted, you may also be required to pay the other party's costs.
- When opposing the acceptance of a patent, the applicant will be informed of your opposition, as well as any documents or evidence provided (unless you notify IP Australia of the confidentiality requirement for some or all of the documents). You should consider your overall strategy and if you are comfortable having the applicant be aware of you and access these materials.
- It is possible that filing an opposition may alert the other party to your claims and can cause them to act more defensively or even contest your own rights.
- Using this process improperly can be considered a bullying tactic and may expose you to costs.
- If you are late in providing evidence which you promised, late fees may be owed to IP Australia.
What are the possible outcomes?
There are three possible outcomes from the patent oppositions process,
- The patent is upheld in its original form
- The patent is upheld in an amended form
- The opposition is successful and the patent is revoked.
In some cases, amendments made to the claims may provide opportunity for a further hearing (if the opposing party wishes to oppose the amendments).
What might the costs be?
- A notice of opposition to start the process costs $1,200 payable to IP Australia.
- IP Australia charges fees for hearings:
- $1,200 for hearings evaluating written submissions only
- $2,000 per day for oral hearings in person (In most cases, hearings can take anywhere from a few days to a few weeks.)
- If you have an attorney acting on your behalf, you may be liable for additional legal fees.
- If your opposition is unsuccessful, you may also be required to pay the other party's costs.
How much time might be involved?
Oppositions can take up to 12 months depending on the various stages outlined below.
- The notice of intent (NOI) to oppose a patent must be filed within 3 months of the publication of acceptance. The party opposing the patent must then file a Statement of Grounds and Particulars within a month from when the NOI is filed. Provided the opposition is not dismissed, the process will then enter the evidence stage.
- The party opposing the patent must provide evidence which supports their opposition within 3 months of the Statement of Grounds and Particulars being filed.
- The owner of the patent then has 3 months to provide evidence in response (defending or explaining why their patent should not be changed or revoked).
- After this, the party opposing the patent has 3 months to provide evidence in reply.
- The hearing follows, and the decision is provided within 3 months of the hearing date.
How much is this used?
This is still being investigated and will be updated as the tool is refined.
Who can use this?
Anyone can oppose a patent.
Who’s involved?
The opposing party, the patentee and a hearing officer from IP Australia are all involved. Both parties to the dispute will commonly engage legal practitioners for advice and representation.
What do you need to proceed?
- Details of the patent you want to oppose, including the patent number and patent holder.
- Grounds for opposition, including (but not limited to), a lack of support or enablement (sections 40(2)(a), 40(3) of the patents act), novelty or inventive step (section 7 of the patents act).
- In cases where you are using evidence to support your opposition, that evidence must be collected and prepared. Refer to Evidence In Oppositions And PBR Objections | IP Australia for more information about evidence.
Before you take any action, you should consider whether you need legal or professional advice specific to your situation. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success. IP Australia provides information on getting professional assistance with your IP. In addition, the Institute of Patent and Trade Mark Attorneys Australia (IPTA) offers free 30 minute consultations with an attorney.