Patent hearings

Patent hearings

The role of the IPONZ Hearings Office

The IPONZ Hearings Office is a specialist tribunal that is responsible for administering patent proceedings under the Patents Act 1953 and Patents Act 2013 in a fair, efficient and cost effective manner.

Such proceedings include:

  • an opposition to a patent,
  • an application to revoke a patent,
  • a hearing on the exercise of the Commissioner’s discretion, including a decision to refuse a patent application for registration.

Once the evidential stages of a proceeding are complete, the case will be passed to an independent Assistant Commissioner who will hear both parties before issuing a formal written decision, which will normally include an award of costs to the successful party. It is therefore important that parties be mindful of the possibility of a costs order being made against them before deciding to initiate, or defend, patent hearing proceedings.

Patent proceedings tend to be complex, involve valuable personal property rights, and are governed by strict formal pleading and evidential requirements. We therefore strongly recommend that you consider obtaining professional assistance from a registered patent attorney, or a lawyer experienced in contentious IP matters, if you are not familiar with this area of work. The Hearings Office must maintain its neutrality at all times and cannot provide parties with any legal advice.

At present, patent proceedings can fall under either the Patent Acts 1953 or the Patents Act 2013 depending on when they were commenced or when the complete specification was filed. It is therefore vitally important that you know which Act applies to your patent proceeding. To work this out, please see our Which Act Applies page.

How IPONZ proceedings are run

All IPONZ proceedings are run through the online case management facility.

To use the IPONZ case management facility you will need your own user ID. See become a register user for more information on how to set up your user ID .

When a proceeding is filed it is allocated its own unique case number, which is separate to the patent application or patent registration number to which the proceeding relates. All information relating to the proceeding is compiled on the proceeding case, not the related IP case which is shown as a ‘linked case’. Without exception, any correspondence relating to the proceeding must be filed on the proceeding case, not the related patent application or registration case.

Once a proceeding is filed, the Hearings Office communicates with the parties, or their agent, exclusively through the online case management facility. This provides the parties only (not the public) with full access to all activities and documents filed in the proceeding (apart from any confidential documents that are yet to be served on the other side).

Please be aware that IPONZ proceedings are subject to the Official Information Act (OIA). As such, all documents filed may be released to the public if requested unless there is a valid reason to withhold them under the OIA, for example if the information is commercially sensitive.

Hearings Technical Focus Group

The Hearings Technical Focus Group is a forum where senior intellectual property and legal representatives meet with IPONZ to discuss Hearings Office practices, guidelines and other hearings related matters.

Read the notes from the most recent meetings.