Lower Cost Alternative to Challenging Australian Patents
In April 2013, the provisions available for challenging an Australian patent via requesting re-examination were significantly expanded. Notably, since April 2013 re-examination has provided a multi-prong and lower cost “first shot” alternative to seeking revocation of a patent through Federal Court proceedings.
Expanded Grounds for Attack
The expanded provisions provide that novelty, obviousness, subject matter, utility, and sufficiency type grounds may be pursued when requesting re-examination. Prior to April 2013, only the more limited grounds of novelty and obviousness were available. Importantly, the introduction of the additional grounds has substantially increased the potential lethality of a re-examination type attack.
The expanded provisions also mean that, in some circumstances, requesting re-examination as an initial step in challenging granted patents rights could avoid the substantial cost and timing uncertainty associated with revocation proceedings.
In the case of subject matter type grounds, re-examination may present a significant invalidation risk to patents in fields where patent eligibility requirements have shifted to the extent that developments in those fields (such as in the field of pure business methods) are currently considered as non-patentable subject matter. Similarly, the ability to invalidate a patent on utility grounds is significant since this ground was not available for consideration during examination of patent applications where a request for examination was made prior to April 2013.
What is Re-examination?
Re-examination involves requesting the Australian Patent Office to reconsider the claims of an Australian patent. A request for re-examination may be accompanied by prior art documents, and potentially submissions (including expert evidence), which the requestor considers relevant to the validity of the claims of the patent. The prior art and submissions are then considered by a patent examiner and result in the issue of a re-examination report.
If an adverse re-examination report is issued setting out objections to the validity of the patent, the onus is then placed on the patentee to address the objections raised. In some cases, a re-examination report may raise irresolvable issues which will inevitably lead to revocation of the patent. This may be the case, for example, for subject matter type issues. Alternatively, the re-examination report may raise issues which may necessitate a claim amendment.
Unlike a patent opposition to a patent application (which is conducted before the Patent Office) or a revocation procedure (which is conducted before the Federal Court of Australia), a re-examination procedure is conducted ex-partes, meaning that once a request for re-examination has been filed, the requestor has no further involvement in the procedure other than receiving a copy of the re-examination report.
The Balance of Probabilities
In addition to the expanded provisions available for re-examination, a further potential difficulty for patentees is that the standard of proof which applies during re-examination has changed. Whereas prior to April 2013 the Commissioner had the ability to revoke a patent in circumstances where the Commissioner was practically certain any granted patent was invalid, since April 2013 this ability has changed such that the Commissioner only now need be satisfied on the balance of probabilities that a patent would be or is invalid.
New Zealand Position
Since September 2014, New Zealand has adopted a similar approach for re-examination of accepted patent applications or granted patents using a similar process to that available in Australia.
The expanded grounds and more stringent validity considerations which have applied to re-examination since April 2013 mean that re-examination now presents a useful and relatively inexpensive approach to launch an initial invalidity attack on an Australian Patent. In circumstances where the grounds for requesting re-examination involve a clear anticipation or subject matter type issue, re-examination could provide a lower cost, shorter time frame, option for revoking an Australian patent. In the event that a request for re-examination was unsuccessful, a revocation procedure would still be an available option via the Federal Court.
Stephen O’Brien is a Senior Associate in our ICT Team and a member of our Oppositions, Re-Examination and Revocation Group.