What is a patent opposition?

Patent opposition allows a third party to challenge the validity of a standard or innovation patent. They can be made against either an accepted standard patent (during the fixed three-month opposition period) or against a certified innovation patent.

A patent opposition is conducted by IP Australia and is a useful dispute process as an alternative to litigation (although in some cases, litigation may still be the more appropriate course of action).

What are the grounds for opposing patent registration?

Under the Patents Act 1990 there are a number of set grounds under which a party can oppose. These include:

  • nominated inventor is not entitled to a grant of a patent
  • nominated inventor is only entitled to the grant of a patent in conjunction with another inventor
  • the invention is not a patentable invention (i.e. it is not novel or inventive)
  • the claims of the invention are not fairly based on its specification
  • the claims of the invention are not stated clearly and succinctly.
Once accepted, standard patents are advertised as having been accepted and become open to a three-month opposition period. During this time a third party can lodge a notice of opposition with IP Australia. Innovation patents can be opposed at any stage following certification (when the patent becomes legally enforceable). If an innovation patent is registered but not certified, a third party can request examination in the belief that it will fail to be certified.

As with litigation, many oppositions are resolved prior to reaching a hearing and can provide a useful forum to open dialogue and assist the disputing parties reach a settlement.

Our team has successfully represented clients in a variety of patent opposition matters. Our approach is designed to protect both your reputation and your market share by tailoring a strategy to your needs and the needs of your business in line with your commercial objectives.

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How can Actuate IP assist?

Our patent lawyers and patent attorneys have extensive experience in patent oppositions, capable of achieving results tailored to you and your business needs. We represent both local and international clients and associates.

Contact Actuate IP to learn more.