How to respond to an opposition

Before you're granted a patent, others will have the opportunity to oppose the decision. If this happens, we'll let you know and you'll be given a chance to respond.  

What is an opposition?

Anyone can challenge the decision to grant a standard patent by making a formal objection. This is called an opposition.

An opposition must be filed during the three-month period following publication of acceptance in the Australian Journal of Patents, otherwise an extension of time will be needed.

Common reasons for opposition

Oppositions to patent applications are rare — fewer than two per cent of accepted standard applications are opposed.

The most common reasons for opposition are when someone else believes:

  • Your invention is identical or very similar to another patent application, therefore it isn't new and inventive
  • You aren't the true owner of the invention.

What happens if someone opposes your application 

Someone who believes that your application will have a negative impact on them or their patent, opposes your application by filing a notice of opposition with us, within three months after publication of acceptance of your application.

An opponent typically presents a case alleging your patent would be invalid if granted by filing a statement of grounds and particulars. Often they'll support this case by filing evidence in the form of documents and/or declarations by experts in the field of technology.

The statement of grounds and particulars will be provided to you, and usually we'll send you all the evidence that they've filed as well. You'll be given an opportunity to file responding evidence.

If someone opposes your application, we recommend seeking professional advice on what steps to take.

How do I defend against the opposition?

The best way to defend an opposition is to play an active role in it by making your case. Assemble the evidence, documentation and arguments challenging the claims that your patent is invalid and submit it to us at the appropriate time.

If you decide it's not worth defending your application, you can withdraw it. This will bring the opposition to an end.

How is the matter decided?

The process for deciding the matter is as follows:

  • Your evidence will be provided to a delegate of the Commissioner of Patents, who will typically hold a hearing where each party can present their case. The delegate will then consider all the arguments and evidence and make a decision
  • If the opposition is successful, you're usually given an opportunity to file amendments that overcome the problems. This may lead to a further hearing
  • If the opposition isn't successful, your patent will be granted
  • Either you or the opponent may appeal the decision in the Federal Court.

Evidence in oppositions

Seek professional advice

If your patent application is opposed, we recommend seeking legal advice on how to proceed.

Engaging a patent attorney