This post compares and contrasts the evidence requirements for patent oppositions in Australia and New Zealand.

Procedure and timing

In both countries, a person seeking to oppose the grant of a patent is entitled to file evidence in support of their case.

In Australia, for standard patents, the opponent has three months from filing their statement of grounds and particulars to file their supporting evidence. For innovation patents, the opponent must file their evidence contemporaneously with their notice of opposition and statement of grounds and particulars.

In New Zealand, the procedure is a little different because the patent applicant must be given a chance to file a counter-statement to the opponent’s opposition notice and statement of case before the opponent may file their evidence. If a counter-statement is served on the opponent, the opponent then has four months to file their supporting evidence. An opponent in New Zealand is, therefore, able to peruse the applicant’s counter-arguments before filing their evidence. This gives them an opportunity to obtain further evidence, or perhaps make necessary adjustments/improvements to the presentation of their existing evidence, before filing it. In my opinion, the New Zealand opposition process is, therefore, more opponent-friendly than the Australian one, at least in these early stages.

In Australia, once an applicant has received all of the opponent’s evidence and a notice from the Commissioner of Patents that all evidence is filed, the applicant is then given three months to file its evidence in answer. Once the opponent has received all such evidence and similar notice from the Commissioner of Patents, the opponent is then given two months to file its evidence in reply to the applicant’s evidence. The New Zealand procedure is materially the same as this, albeit with some variations to applicable deadlines. In New Zealand, after the applicant has received all of the opponent’s evidence, they are given four months to file, and serve on the opponent, their evidence in support of their case. The opponent then has three months to file, and serve on the applicant, their evidence in strict reply to the applicant’s evidence.

Further evidence

In both countries, the ability of the parties to an opposition to file evidence in addition to the evidence described above is substantially restricted.

In Australia, for oppositions commencing before 15 April 2013, a party may request leave to file further evidence. The Commissioner of Patents will have regard to several factors when deciding whether or not to allow the request, including whether the evidence could not have been reasonably obtained earlier and, if allowed, would probably have an important influence on the case.

For oppositions commencing after 15 April 2013, no formal provisions for filing further evidence are available. A party is, however, entitled to submit further information and ask the Commissioner of Patents to use its general discretion to rely on the information in the opposition. The Commissioner may not rely on the information unless the parties have been given an opportunity to make representations about the information.

In New Zealand, further evidence may only be filed if a party applies to file it out of time and the Commissioner of Patents grants the request. The Commissioner may only grant the request if genuine and exceptional circumstances justify doing so and the evidence could not have been filed earlier.

Form and format

In Australia, evidence must be submitted in the form of a written declaration, which does not necessarily have to be statutory declaration. New Zealand imposes more formal requirements and requires evidence to be submitted in the form of a statutory declaration or affidavit. Both countries make provision for the giving of oral evidence at opposition hearings.