What you need to know about patent oppositions

 

What is a Patent Opposition?

An opposition is the formal process by which a third party challenges the validity of an innovation patent, or an application for a standard patent before it is granted.

Apart from the granting of a patent, other actions in the patent application process can be opposed including:

  • an applicant’s request to amend their patent specification
  • the grant of an extension of time to restore a patent or patent application
  • the grant of an extension of term of a pharmaceutical patent
  • the grant of a licence to use an invention

 

Proceeding with an opposition: Why and How?

The opposition process is time critical and follows a strict timeline of actions that must be performed to avoid the opposition being dismissed.

The notice of opposition to the grant of a standard patent application must be filed within 3 months of when we publish a notice that the application has been accepted.

An innovation patent may be opposed any time after certification.

The time frames for opposing other actions vary under the Patents Act 1990.

 

What are the grounds for patent opposition?

The most common reason for opposing the grant of a standard patent is that the invention claimed in the application is not new and/or inventive. Other reasons may also be given, including that the patent applicant is not the owner of the invention.

 

Defending an opposition: Why and How?

A patent is an important intellectual property right that should be enforced by the IP owner.

Both the patent applicant and the opponent each have an opportunity to provide evidence to support their case. Your attorney will review the Statement of Grounds and Particulars (SGP) provided by the Opponent and will file Evidence in Answer on your behalf.

We have outlined the process and approximate timing in the below flowchart.

 

How can a Patent Attorney help?

If your patent application is opposed, it is highly recommended that you seek professional advice. Our Patent Attorneys have in-depth knowledge of the stages of proceedings and can provide guidance to help you determine your options and successfully defend your registration.

Alternatively, if you are opposing a patent application then our experienced Attorneys can help you reach a successful opposition by correctly preparing and filing evidence.

 

An Important Reminder

IP Australia will not notify you if a similar patent to your own is filed.

If you would like to commence a patent opposition or need assistance overcoming an opposition in Australia, New Zealand or internationally, please contact us at [email protected].

 

Patent Oppositions Timeline

patent oppositions flyer AU

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