At Wynnes, we often remind our overseas patent attorney colleagues that Australia offers a powerful, underutilised mechanism to challenge competitors’ patent rights before they are granted: patent opposition proceedings.
Unlike many jurisdictions where invalidation requires expensive court action, Australia has a pre-grant opposition system that can deliver a substantial strategic advantage to your clients.
Why Consider Australian Patent Oppositions?
Cost-Effective Compared to Litigation
An Australian opposition is typically significantly less costly than revocation proceedings in court. It provides an efficient way to challenge questionable patent applications before rights are granted.
An Inexpensive “Dry Run”
Oppositions are often described as a dry run for litigation in other jurisdictions. They allow you to test the strength of prior art and arguments in a controlled setting, helping you refine your strategy and evidence if you anticipate litigation elsewhere.
Leverage Without File Wrapper Estoppel
Australia does not have file wrapper estoppel in the same way as the United States. However, any amendments made to an Australian application or findings of invalidity can still be highly persuasive in corresponding disputes abroad, particularly when defending or attacking the same patent family. Successfully narrowing or revoking claims in Australia can undermine the patentee’s position globally.
Straw Man Options Available
If your client prefers to keep their identity confidential, straw man filings are permitted in Australia. We can file an opposition through us or a third party, keeping the true opponent’s name out of the public record.
Flexibility to Suit Your Client’s Objectives
At Wynnes, we can tailor opposition strategies to fit any budget or ambition. From targeted budget attacks (focusing on selected claims or grounds) to comprehensive gold-standard oppositions supported by counsel, expert declarations and robust prior art, we will work with you to develop the most effective approach.
Timing and Deadlines
The opposition period commences upon publication of acceptance and runs for 3 months. This relatively short window underscores the importance of monitoring competitor applications and acting decisively.
Potential Outcomes and Leverage
Successfully opposing a patent application can result in:
- Revocation or amendment of the claims before grant
- A strong negotiating position for future settlements or licensing
- Creating an evidentiary record that may be useful in other jurisdictions—even without formal estoppel
How We Can Assist You
As a dedicated Australian patent and trade mark attorney firm, Wynnes has extensive experience representing both local and international clients in opposition proceedings before the Australian Patent Office. We routinely collaborate with overseas firms to coordinate strategies across jurisdictions and ensure arguments are harmonised with parallel disputes or invalidation actions in Europe, the US, and Asia.
Our services include:
- Monitoring applications in Australia for relevant sectors
- Advising on the best opposition strategy (direct or straw man)
- Preparing and filing notices of opposition and evidence
- Managing expert declarations and prior art investigations
- Engaging and instructing experienced counsel to prepare evidence, submissions and/or appear at hearings
- Representing clients at hearings before the Patent Office
- Providing clear cost estimates to help you plan with confidence
Talk to Us About Upcoming Deadlines
If your clients have competitors with pending Australian patent applications, now is the perfect time to consider this powerful and cost-effective strategic tool.
For further information about Australian patent oppositions—including monitoring services, budget estimates, and tailored strategies—please contact us. We would be delighted to help you leverage Australia’s unique system to safeguard your clients’ interests.
Take advantage of our Free Consultation
Reach out to us today to explore how we can work together to protect and enhance your clients’ intellectual property in Australia.
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