In the decision of the Full Federal Court of Australia in IGT (Australia) Pty Ltd v Aristocrat Technologies Australia Ltd  FCAFC 131 Justice Gyles has thrown doubt on the correctness of the approach adopted by the Commissioner and the Federal Court on appeal under section 60(4) with respect to the Opponent’s onus in pre-grant oppositions.
For a number of years the authorities have drawn a distinction between opposition and revocation proceedings. The judge at first instance summarized the distinction as follows (Aristocrat Technologies (2007) 239 ALR 181, (2007) 71 IPR 259 at ):
“whether it can be concluded clearly or as a matter of practical certainty that the opposition is well made and that the patent, if granted, would be bad, … the issue for resolution by the court is not whether the matters grounding the opposition (here want of novelty and obviousness) have been made out in the manner required in revocation proceedings.” (Original emphasis.)
On appeal Justice Gyles questioned the correctness of this approach. Whilst his Honour accepted that the parties had agreed upon the formulation of the issue as enunciated by the judge at first instance, Gyles J observed that this approach could not be reconciled with the provisions of ss 49, 60, 158 and 160 of the Patents Act 1990 (cf Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 399 per Crennan J at –).
It will now be very interesting to see whether Justice Gyles’ views get a chance to be tested at a later time.