Opposition to grant of a patent - Patents Act 2013

Opposition process overview

1. Patent application is accepted and published in the Patent Office Journal.
2. Within 3 months (or within an extended time if an extension has been obtained) opponent files notice of opposition and statement of case
3. Within 2 months applicant files counter-statement.
4. Within 4 months opponent files evidence in support of their position.
5. Within 4 months applicant files evidence in support of their position.
6. Within 3 months opponent files evidence strictly in reply to the applicant’s evidence.
7. Once the evidential stages are complete the Commissioner asks the parties how they wish to be heard, and confirms the hearing date and venue.
8. Following the hearing before the Assistant Commissioner, or any other way the parties elected to be heard, the Commissioner issues a formal written decision.
9. The Commissioner’s decision may be appealed to the High Court.

About this information

The following information is intended to guide and inform parties involved in IP hearings. It reflects the current accepted practice of IPONZ and is to be read in conjunction with the:

• Patents Act 2013; and
• Patent Regulations 2014 

1. Opposition period and publication date

Regulation 93(2)

Any person may file an opposition against an accepted patent application within 3 months of the publication date (the opposition period). The publication date is the date the acceptance of the application was published in the IPONZ Journal.

2. Extension of time to oppose

Regulation 93(2)

If you are considering opposing the grant of an accepted patent application, you may request an extension of time to file an opposition.

The opposition period can be extended by:

• 1 month (without the applicant’s consent); or
• 2 months (with the applicant’s consent).

If you wish to make a request for an extension of time, you must file it within the opposition period, that is, within 3 months of the publication of acceptance in the Journal.

3. Notice of opposition

Regulation 92

If you wish to oppose the grant of an accepted patent application, you must file a:

• Notice of Opposition setting out the grounds on which the patent is opposed, and
• Statement of Case setting out the facts relied upon and the relief sought; and
• Pay the opposition fee.

Please note that the Statement of Case must be provided at the time of filing the Notice of Opposition for the opposition to be properly filed. If a Notice is filed without a Statement of Case the opponent will be advised that the Notice is incomplete and must be accompanied by a Statement of Case within the opposition period or extended period. The opposition will be deemed to have been filed on the day it is complete and only if it is complete. Unlike proceedings under the 1953 Act, an extension of time cannot be granted to an opponent to file their Statement of Case beyond the extension already provided for by regulation 93(2). ¹

Grounds of opposition

Section 92

The grounds of opposition include (in summary only):

• not a patentable invention under section 14
• lack of entitlement
• non-compliance with subpart 2 of part 3 of the Patents Act 2013 (for specification requirements)
• obtaining by fraud, false suggestion, or misrepresentation
• secret use in New Zealand
• contrary to law.

Statement of case

The Statement of Case must fully set out the facts on which the opponent relies to support their grounds of opposition, and the relief sought.

For example:

• For the ground of obtaining, the Statement of Case must set out in detail how, when and where the obtaining took place.
• For the ground of lack of novelty (Section 14) it should specify how the claimed invention forms part of the prior art base.
• For relief sought, that the grant of the patent is refused and an award of costs is made.

4. Counter-statement

Regulation 94

Once a notice of opposition has been filed, the Commissioner will notify the patent applicant, and provide them with a copy of the notice of opposition and statement of case.

The patent applicant then has 2 months to file a counter-statement if it wishes to defend its patent application. The Counter-statement must set out the grounds upon which the applicant contests the opposition.

The purpose of the applicant’s counterstatement (also referred to as the applicant’s pleadings) is to clarify which assertions in the notice of opposition the applicant either accepts or denies. This process is used to determine which matters are actually in contention so the parties can focus their efforts on these contentious matters when preparing and filing their evidence, as opposed to wasting time and effort filing evidence for matters that are not in dispute.

At this stage, the applicant may amend their patent specification to overcome the opposition. The amendment request should be filed on the opposition case file. Amendments must be compliant with Section 83 of the Patents Act 2013 and are referred to the IPONZ Patents examination team for consideration.

Consequences of not filing a Counterstatement

Regulation 94(3)

It is important that the applicant files a valid counter-statement on or before the deadline notified by IPONZ as failure to do so will result in the patent application being treated as abandoned.

5. Filing of evidence 

Once the counterstatement has been filed, the proceeding progresses to the filing of evidence by the parties within regulated time limits.

Form of evidence

All evidence filed during opposition proceedings must be in the form of a statutory declaration or affidavit accompanied by exhibits if necessary. If evidence is not filed in the proper form, it won’t be admitted into the proceeding.

6. Opponent’s evidence in chief

Regulation 94(4), Section 209

Within 4 months of receiving the applicant’s Counter-statement, the opponent may file evidence in chief to support their grounds of opposition.

7. Applicant’s evidence in chief

Regulation 94(5), Section 209

The applicant may file evidence within 4 months from either:

• receiving a copy of the opponent’s evidence, or
• if the opponent does not file any evidence, from the expiry of the deadline the opponent had been set for filing its evidence. 

8. Opponent’s evidence in reply

Regulation 94(6), Section 209

Within 3 months after the applicant files their evidence in chief, the opponent may file evidence strictly in reply. This evidence can only address issues raised in the applicant’s evidence in chief.

9. Evidence out of time

Regulation 165

After the completion of the evidential steps above, no further evidence may be filed unless a party makes a formal application to the Commissioner to file evidence out of time.

The Commissioner will only admit the evidence out of time where:

• there are genuine and exceptional circumstances justifying the late filing of the evidence; or
• where the evidence could not have been filed earlier.

10. Supply of documents for use of the Commissioner

Regulation 163

All information and documents referenced by the parties in a proceeding must be provided unless otherwise directed, except for New Zealand patent specifications and frequently cited Court or Commissioner decisions.

A verified English translation must be provided if any specification or any other document relied upon is in another language.

11. Extensions of time and halts

Regulations 159 and 161

At any stage in an opposition proceeding after the notice of opposition has been filed, a party may request an extension of time to complete their task or request that the proceeding be halted while another matter is resolved or concluded, for example where the parties have entered into settlement negotiations or where there is another co-pending proceeding between the parties that needs to be determined first.

It is important to note that under the 2013 Act a request for an extension or halt must be requested on or before the applicable deadline for doing the current step in the proceeding.

See extensions and halts guidelines for more information.

12. Hearing

Regulations 169 and 172

Form of hearing

Once the evidential stages of the opposition proceeding are complete, the IPONZ Hearings Office will ask the parties how they wish to be heard. The parties may elect one of the following options:

(a) On the papers already filed (no hearing fee).

• Parties choosing this option are not required to do anything further and will be notified through the case management system when the Assistant Commissioner has decided the case.

(b) By filing written submissions to be considered by the Assistant Commissioner hearing the case (hearing fee required).

• Parties choosing this option will be set a task through the case management system to file their written submissions.
• Payment of the hearing fee is due at the time of filing the written submissions.

(c) By attendance at a hearing in person before the Assistant Commissioner (hearing fee required).

• Parties choosing this option will be notified of a hearing date no less than one month in advance.
• A task will be set to file hearing submissions prior to the hearing date.
• Payment of the hearing fee is due 10 working days before the hearing date. 

See patent hearing fees for more information.

Wellington is the primary venue for hearings by appearance. However, the IPONZ Hearings Office will consider requests by the parties to hold hearings in either Christchurch or Auckland if this better suits them. The IPONZ Hearings Office will also consider requests for a party to appear at the hearing via a video link using the secure MBIE video facility. While the Hearings Office will attempt to accommodate these requests, it is entirely at the discretion of the IPONZ Hearings Office.

Once the parties have advised how they wish to be heard, a hearing date and venue will be set and the case file including both parties pleadings, evidence, and hearing submissions (if any) will be passed over to the Assistant Commissioner hearing the case.

Hearing dates are final once scheduled

Hearing dates are set by the Hearings Office having regard to a number of considerations such as the availability of the Assistant Commissioner hearing the case. When a hearing date is set down it should be considered final.

While the Hearings Office will endeavour to accommodate the availability of the parties’ counsel where possible, this will not determine the hearing date. Parties are responsible for ensuring they are able to attend the hearing.

In certain circumstances, such as hearings on the papers or by written submissions only, the Office may set down the hearing date without prior consultation.

Hearings will only be rescheduled in the case of exceptional circumstances. Requests for rescheduling of a hearing must be made in writing via the case management system and as soon as possible before the hearing.

13. Hearings decision

Following the hearing (either by appearance, written submissions, or on the papers filed) the Assistant Commissioner will issue a written decision, including any award of costs. The decision will normally be issued within 30 working days from the hearing.

The decision of the Assistant Commissioner will be sent to both parties via the IPONZ case management facility.

See award of costs for more information on costs.

All IPONZ hearings decisions are published on NZLII.

14. Appeal to the High Court

Section 214  — New Zealand Legislation

Parties may appeal the Assistant Commissioner’s decision within 20 working days (according to High Court working days, not IPONZ working days) by:

(a) filing a notice of appeal and application for stay of proceedings in the High Court; and
(b) notifying the Commissioner.

If no appeal is filed, the decision of the Commissioner is final, and the Commissioner will alter any entry on the register accordingly to give effect to the decision.

Please see our guidelines on appeals and stays of proceeding for more information.

Patents hearing decisions: Appeals and Stay of Proceedings

15. Withdrawing from the opposition

The opponent may withdraw their opposition any time before the Commissioner issues a decision.

If the opponent withdraws, the Commissioner will ensure that amendments proposed during the opposition prior to the withdrawal have been approved by IPONZ and incorporated into the complete specification. The Hearings Office will then formally close off the opposition proceeding. Amendments proposed by the applicant and approved by IPONZ during an opposition are unconditional.

In accordance with section 93(c) the Commissioner will then generally grant the application, but may postpone grant and refer the application to the Patents Examination Team for re-examination or issue a decision in the public interest.

If the opponent withdraws without making any prior arrangement as to costs with the patent applicant, costs may be awarded against the opponent.

Footnotes

• 1 Regulations 147(2)(a) and 161(2)(b) preclude any extensions of time for filing a notice of opposition of the kind referred to in regulation 152(1)(a). This includes an opposition to the grant of a patent under section 92, which the Statement of Case forms part of, as per regulation 92(1)(b).