All jurisdictions have mechanisms for challenging the validity of patent applications or granted patents which can be used to prevent another party gaining or having a patent that will impact on your intended activities.

Globally, there are a wide variety of procedures. The options available in Australia are briefly summarised below.  Similar options are available for both standard and innovation patents with some differences in timing and procedure. The procedural steps below are for standard patents.

Filing a notice of matters affecting validity

This procedure is available as soon as an Australian patent application is published and remains available up until 3 months after a patent application is advertised as accepted.

A “Notice” needs to be prepared that indicates why a patent shouldn’t be granted and will usually be accompanied by documents that you want the Patent Office to consider. The most common use of this procedure is to ensure the Patent Office looks at relevant documents during examination. Advantages of this procedure include that the Notice can be filed anonymous and cheap compared to other options. A disadvantage is that after a Notice is filed, it is left to the Patent Office to decide whether its contents are relevant.

Ownership challenges

There are a number of processes that enable you challenge the ownership of a patent or patent application if you believe that you should be the owner or a co-owner.

Patent Opposition

If a patent application is accepted, it is advertised for opposition purposes. There is a three month period where interested parties can object to the grant of the application. This objection process is known as a patent opposition.

Anyone can oppose and it is possible to hide your interest by using a “strawman” to file the opposition (which has potential complications).

An opposition is an evidence-based process before the Patent Office, involves a formal Hearing, and can be appealed to the Federal Court. As a result, the process tends to be expensive (although usually less expensive than Court proceedings).

What are the grounds of opposition?

The main grounds are:

• Someone else is entitled to the patent
• Lack of novelty because the invention was published or used before the filing date.
• Lack of inventive step because it was obvious to a skilled person in the field at the filing date based on what was published, used or common general knowledge.
• The invention falls outside the categories of subject matter for which patents are granted because it is not a “manner of manufacture”.
• The patent specification doesn’t tell a reader how to put the invention into practice.

How and when to oppose a patent?

NOTICE OF OPPOSITION

A Notice of Opposition must be filed at within three months from the date of advertisement of acceptance of the patent application. For strategic reasons, the Notice should be filed on the last possible day.

STATEMENT OF GROUNDS AND PARTICULARS

The Statement sets out the grounds upon which the patent is opposed and any documentation which the opponent proposes to rely on.

EVIDENCE

The opponent has months from filing the Statement to file evidence in support of the opposition. Evidence is usually presented in the form of statutory declarations from expert witnesses.

The applicant then has three months to file evidence in answer. Again, typically from expert witnesses. Within two months of the date of receipt of the applicant’s evidence, the opponent can file evidence in reply. This evidence must be confined to matters raised in the applicant’s evidence.

It is important to engage experts early in the process in order to meet these deadlines.

HEARING

The opposition is usually then set down for a hearing at which each party speaks to written submissions in support of their respective case.

DECISION

After the hearing the hearing office will issue a written decision. This will usually take several months to prepare and send to the parties.

Re-examination

A request for re-examination can be filed after a patent application is accepted or in respect of a granted patent. The initial process is similar to the process of filing a notice of matters affecting validity but requires the party making the request to pay a fee. In practice, re-examination requests usually include very detailed arguments as to why the accepted patent application or granted patent is flawed.

The re-examination request will be assigned to an Examiner who will consider whether to raise an examination report. The owner will then have an opportunity to respond. There can often be a number of reports. If the owner is unable to overcome the issues raised in the examination report(s), the process may result in refusal to grant a patent application or revocation of the granted patent.

A re-examination request can be made anonymously.

Revocation

Revocation proceedings are before the Federal Court. The main grounds are:

• Someone else is entitled to the patent
• Lack of novelty because the invention was published or used before the filing date.
• Lack of inventive step because it was obvious to a skilled person in the field at the filing date based on what was published, used or common general knowledge.
• The invention falls outside the categories of subject matter for which patents are granted because it is not a “manner of manufacture”.
• The invention lacks utility.
• The patent specification doesn’t tell a reader how to put the invention into practice.
• The patent, or an amendment to the patent, was obtained by false suggestions.

The steps of a revocation proceeding are often similar to those of a patent opposition, but the steps and the timetable will be set by the Court. Revocation proceedings are often part of an infringement proceeding which adds additional complexity.