Patent Opposition Process in New Zealand

Before the patent is formally granted and the seal is issued, one application must go through a critical period known as the opposition period. This phase allows third parties, often competitors or other interested entities, to challenge the validity of your patent before it is granted.

Opposition Period

The opposition process is triggered immediately after the patent application is accepted. Once acceptance is advertised in the Patent Office Journal, a three-month window begins. During this specific window, any person can file a notice of opposition to stop your patent from being granted.

It is important to understand that this timeline is strict. While the standard period is three months, it is possible for a potential opponent to request an extension. They may ask for an additional month without your consent, or up to two months if the applicant, agree to it.

For the applicant, this means the period of potential challenge can last up to five months from acceptance. If an extension request is filed, it must be done within the original three-month window. We monitor these timelines closely on your behalf. If no opposition is filed by the deadline, your patent proceeds to grant. However, if a notice is filed, we enter a formal legal proceeding that requires careful management.

Stage 1: Notice of Opposition and Statement of Case

An opposition formally begins when an opponent files a “Notice of Opposition” along with a “Statement of Case”. This is a crucial procedural step. Under the Patents Act 2013, these two documents must be filed together. The Statement of Case is the foundational document of the opposition; it sets out the facts the opponent is relying on and the specific relief they are seeking (usually the refusal of your patent grant and an award of costs).

If an opponent files a Notice of Opposition without a Statement of Case, the filing is considered incomplete. Unlike previous legislation, the current Act does not allow extensions of time specifically for filing the Statement of Case beyond the initial opposition window. This strictness works in your favor as the applicant, as it prevents opponents from launching vague “holding” challenges without substance.

The grounds upon which your patent can be challenged are defined in Section 92 of the Act. An opponent cannot simply object because they dislike the competition; they must have legal grounds. These include assertions that your invention is not patentable (for example, it lacks novelty or an inventive step), that you are not entitled to the patent, or that the invention was obtained by fraud or misrepresentation. Other grounds include “secret use” of the invention in New Zealand before the priority date or that the invention is contrary to law. The Statement of Case must provide details, i.e. if they allege fraud, they must state when and where it occurred; if they allege lack of novelty, they must identify the prior art.

Stage 2: The Counter-Statement

Once an opposition is filed, IPONZ will notify us and provide copies of the opponent’s documents. This initiates the first critical deadline for your defense. You have exactly two months to file a Counter-statement.

Its purpose is to clarify which of the opponent’s assertions you accept and which you deny. This pleading process is designed to narrow the scope of the dispute. By clearly identifying the matters in contention, both parties can focus their subsequent evidence on the actual points of disagreement, rather than wasting time and resources proving facts that are not disputed.

Filing this document is mandatory if you wish to save your application. Failure to file a valid Counter-statement by the deadline has severe consequences, i.e. your patent application will be treated as abandoned. Therefore, drafting a robust Counter-statement is one of the most important services we provide during this phase.

This stage also presents a strategic opportunity. If the opposition highlights a genuine vulnerability in your specification, perhaps a claim is slightly too broad, we can request to amend the specification to address the issue. These amendments must comply with Section 83 of the Act and will be reviewed by the examination team. Successfully amending the specification at this stage can sometimes resolve the opposition entirely or significantly weaken the opponent’s case.

Stage 3: The Evidential Phase

Once pleadings (the Notice and Counter-statement) are exchanged, the proceeding moves into the evidence phase. This is a structured process where both sides submit detailed proof to support their arguments. All evidence must be formally submitted as statutory declarations or affidavits. Informal letters or unsworn statements are not admissible.

The process follows a specific sequence, i.e. firstly, the opponent has four months from the receipt of your Counter-statement to file their “Evidence in Chief”. This is their primary opportunity to prove their grounds of opposition, such as providing expert testimony on why your invention was obvious or prior art documents that predate your filing.

Secondly, once the opponent has filed their evidence (or their deadline has passed), you, as the applicant, have four months to file your “Evidence in Chief”. This is where we build the substantive defense of your invention. We may work with technical experts to swear affidavits demonstrating the inventive step of your technology or to refute the interpretation of the prior art put forward by the opponent.

Finally, the opponent has a defined right of reply. They have three months to file “Evidence in Reply”. It is critical to note that this evidence is strictly limited to addressing points raised in your evidence. They cannot introduce new grounds or new lines of attack that should have been included in their initial evidence.

This exchange of evidence can take nearly a year to complete. Once this phase concludes, no further evidence can be filed unless a party successfully applies to the Commissioner for special leave, which is only granted in genuine and exceptional circumstances.

Stage 4: The Hearing

Once the evidential stages are complete, the case is ready for decision. The IPONZ Hearings Office will contact both parties to determine how they wish to be heard. There are three options available, each with different cost and strategic implications.

Firstly, the Assistant Commissioner makes a decision based solely on the documents already filed. No hearing fee is required, and no further arguments are presented.

Secondly, the parties file written legal arguments summarizing their case, which the Assistant Commissioner considers alongside the evidence. A hearing fee applies.

Thirdly, a formal in-person oral hearing, where legal counsel appears before the Assistant Commissioner to argue the case in person. This is the most comprehensive option, allowing for real-time engagement with the decision-maker. The primary venue is Wellington, though requests for Christchurch, Auckland, or video link appearances can be made.

Complex technical disputes often benefit from an oral hearing where we can guide the Commissioner through the intricacies of the invention.

Hearing dates are set by the Office and are considered final. Rescheduling is rare and only permitted in exceptional circumstances, so priority must be given to the assigned date. Following the hearing, the Assistant Commissioner generally issues a written decision within 30 working days.

Stage 5: Resolution and Costs

If the decision is in your favor, the opposition is dismissed, and your patent proceeds to grant. If the decision goes against you, the grant may be refused. That said, the Commissioner’s decision can be appealed to the High Court within 20 working days.

It is also possible for an opponent to withdraw their opposition at any time before a decision is issued. If they do so, the Commissioner will typically proceed to grant the patent, provided any amendments proposed during the opposition are incorporated. That said, if an opponent withdraws without a prior agreement regarding costs, we can apply to have costs awarded against them. Conversely, if you as the applicant are successful in the hearing, the Commissioner’s decision will usually include an award of costs in your favor.

Extensions and Halts

Opposition proceedings are complex and can be subject to delays. The regulations allow for extensions of time or “halts” to the proceedings, but these are tightly controlled. A party might request a halt if, for example, settlement negotiations are underway or if another related legal proceeding needs to be resolved first.

However, the rule of the 2013 Act is that any request for an extension or halt must be made on or before the deadline for the current step. You cannot miss a deadline and then ask for an extension retrospectively. As your representatives, we manage the docketing of all these dates to ensure that every procedural requirement is met on time, preserving your standing in the case.

How can we help?

The opposition process is a demanding legal hurdle that stands between acceptance and the final grant of your patent. It involves strict deadlines, complex evidentiary requirements, and formal hearings.

At our firm, we provide the specialized service required to navigate this landscape. From drafting the notice of intention to oppose or initial Counter-statement to cross-examining expert witnesses at a hearing, we can assist in both the initiation of opposition and also, defend against such opposition.

If your patent application is facing opposition, or if you are concerned about a competitor’s application, contact us today to discuss your strategy.

Contact us for a free consultation now.