With the recently introduced rule changes relating to the filing of Information Disclosure Statements before the USPTO, I thought it would be timely to examine if similar requirements exist for applicants of an Australian patent application to disclose relevant prior art to the Australian Patent Office (APO).
The good news!
The good news is that there is no positive “duty” incumbent on an Australian patent applicant to disclose prior art to the APO, even if it is material to the patentability of their application. This stands in contrast to the obligations that apply to US patent applicants (and their representatives).
Well, that was a short article! Despite there being no duty of disclosure, there are, however, some other related considerations that you should be aware of.
Is there an Australian equivalent to “inequitable conduct”?
US patent practitioners are very concerned about ensuring all potentially relevant prior art is brought to the attention of the USPTO during prosecution on a US patent application. One important reason for this is that failure to advise the USPTO of any relevant information could lead to a finding of inequitable conduct should any eventual granted patent be challenged.
Assertions of inequitable conduct typically occur in patent litigation, where an alleged infringer will assert inequitable conduct by the patentee in obtaining the patent in suit. If this allegation is made out, and even if the complained-of conduct is only relevant to a subset of the claims of the patent, all claims will be unenforceable. Accordingly, a finding of inequitable conduct results in a complete defence to infringement.
In Australia, according to Section 138(3)(d) of the Patents Act 1990 (Cth) (Act), a patent may be revoked “either wholly or so far as it relates to a claim” on the basis that the patent was “obtained by fraud, false suggestion or misrepresentation”. The first thing to note, and by comparison to a finding of inequitable conduct in a US court, is that a breach of Section 138(3)(d) does not automatically revoke the entire patent.
While fraud requires a proving of intent by the patentee to deceive, Australian courts have held that a misleading statement resulting in a patent grant could also amount to a false suggestion or misrepresentation that triggers Section 138(3)(d), even if given in good faith. The misleading statement could occur in the specification or in correspondence with the APO but critically, the misleading statement must have been material to the grant of the patent.
As an example, care must be taken in response submissions to not overstate the legal or technical position, particularly if the applicant is relying on an asserted advantage of the claimed subject matter over a prior art disclosure. Additionally, arguments relying on characterizing the prior art in a manner advantageous to the patentability of the applicant’s claimed subject matter must be careful to be technically correct and not rely on a strained interpretation of either the prior art or the claimed subject matter.
Having said this, patents are rarely invalidated due to false suggestion or misrepresentation. It is understood that Examiners are skilled in the technical area of the patent, making it challenging to prove whether any asserted misleading representation by the patentee was material to the patent being granted even though the court can draw inferences based on the available evidence.
Amending granted patent claims
Australian law allows for a granted patent to be amended subject to certain requirements relating to the scope of any amended claims and support for the amendment in the patent specification (Section 102 of the Act).
One scenario where a patentee may consider amending a granted patent would be if litigation was anticipated, and the patentee was aware of relevant prior art not considered during examination of the patent. This prior art may have been identified during examination of a counterpart patent application subsequent to the granting of the Australian patent and could potentially invalidate one or more of the granted claims. In this scenario, the patentee could amend the granted claims to distinguish the prior art and/or focus on infringing conduct.
An important factor which may ultimately determine the allowability of any proposed amendment is whether they are considered by the APO (under Section 104 of the Act) or alternatively a court (under Section 105 of the Act) where the patent is already subject to court proceedings. Assuming the amendment would otherwise be allowable under Section 102, then the APO must accept the amendment. On the other hand, a court considering the same amendment under Section 105 has the discretion to refuse the amendment despite it being otherwise allowable, and further placing the burden on the patentee to convince the court to allow the amendment.
There have been some important instances where an Australian court has refused an amendment based on unreasonable delay on the part of the patentee in seeking the amendment, e.g. where relevant prior art necessitating a claim amendment had been known for some time before the amendment was eventually sought.
Given modern international examination practice which allows Examiners to access the examination history of counterpart applications, this scenario is only likely to arise where relevant prior art in a foreign jurisdiction has been identified after patent grant in Australia. In these circumstances, promptly amending the granted claims of your Australian patent as soon as reasonably possible after identification of the prior art is prudent. This will ensure the amendment is either considered by the APO, which will have no discretion to refuse the amendment request if it meets the
Section 102 requirements, or, if the patent is already subject to litigation, allow the patentee to resist an assertion by a challenger that there has been an unreasonable delay in requesting the amendment.
There may also be circumstances where prior art already raised in another jurisdiction may have been simply missed by the Australian Examiner, leading to broader claims being allowed. Remembering that the Australian applicant is not under any obligation to disclose the missed prior art to the Examiner, it would still be prudent to ensure the claim set of any Australian application includes at least dependent claims that address the missed prior art.
Closing comments
While there is not a positive duty to disclose relevant prior art or an overarching “duty of candor”, as in the case of US patent applicants before the USPTO, Australian patent applicants still have some obligations in the conduct surrounding the prosecution and enforcement of an Australian patent that could potentially lead to revocation or the inability to amend your patent during litigation.
The above is only a brief overview that highlights some key considerations. Please consult your Australian attorney if you believe any of these may apply to your circumstances.
