Challenging an Australian patent application or granted patent

Sometimes an entity becomes concerned about the Australian patent rights that a competitor has applied for or had granted. Primarily these concerns will be driven by “freedom to operate,” as their competitor’s patent rights may restrict or prevent that entity from commercialising a similar or related product in Australia.

There are several different approaches we can employ to challenge the validity of an Australian patent application (or granted patent), and there are pros and cons associated with the different alternatives. The best approach will be case specific and influenced by factors such as the risk appetite and cost sensitivity of the challenger, and the commercial importance of the outcome.

Below is a summary of the different options that are available.

Third-party examination  
If a request for examination has not been filed by the patent applicant, a third party may request examination of the application. The third party must pay half of the official examination fees, and the patent applicant will then be directed to pay the remainder if they wish to continue with the application. 

Third-party examination is an “ex-partes” process, meaning the challenger is not involved beyond making the request. Advantages include bringing forward the examination of the application, potentially by several years. This may assist the challenger to make more meaningful and earlier assessments of potential infringement risks and the likelihood of the patent being granted (and with what claims).   

A further advantage of third-party examination is that anecdotal evidence suggests Examiners are more diligent with applications where a third-party examination request has been made, noting that such a request indicates that the validity of the application might be more formally challenged at a later stage. As such, the Examiner is likely to be more thorough when considering what grounds for objection might be applicable.   

However, making a request for third-party examination will alert the patent applicant to the challenger’s concerns, and this may provide the patent applicant with the motivation to shore-up their portfolio by taking measures such as filing divisional applications or conducting prior art searches. 

Third-party observations 
A “Notice of Matters Affecting Validity” more commonly referred to as “third-party observations” may be made at any time after publication and before grant of the patent, and in practice this is most common during examination, or before examination has commenced. The third party may remain anonymous, and they can submit prior art and accompanying observations for the Examiner to consider. Third party observations are limited to the grounds of lack of novelty or inventive step, and other grounds of invalidity may not be raised.   

Third party observations as set out in Section 27 of the Australian Patents Act is again an ex-partes process, meaning the applicant does not have direct involvement beyond making their submissions. However, it can provide several advantages to the third party, and may be particularly beneficial in some scenarios.   

One such scenario occurs when the application has already been examined by the Australian Patent Office, but the official search process has not identified one or more highly relevant prior art documents.  

Another comparable situation arises before or after examination, when the prior art in question is obscure, such as non-patent literature or instances of public use, which would be unlikely to be identified during the Patent Office search process.  

Third party observations can be a powerful tool when particularly pertinent new art is identified in respect of novelty. However, in cases of asserting a lack of inventive step, a compelling case may be more difficult to make. Furthermore, after examination has occurred, making third party submissions based on prior art that has already been considered by the Examiner is unlikely to be persuasive, as the Examiners typically take the view that if a prior art document has already been raised and considered, further submissions in respect of the same prior art should only receive cursory further consideration.      

In an analogous manner to third party examination requests, the process of making third party submissions will put the patent applicant on notice of the third-parties concerns, which may be undesirable in some situations.   

Whist third-party submissions may technically be made up to the time the patent is granted, the Commissioner is not obligated to consider submissions made between acceptance and grant, and anecdotal evidence suggests that third party submissions made after acceptance may not be considered formally unless the prior art is particularly salient.  

Request for re-examination  
Re-examination of an Australian patent (or patent application) may occur at any time during the term of the patent, at the Commissioner’s discretion, or as directed by the Federal Court of Australia. The Commissioner must re-examine a granted patent when requested to do so by a third party, but requests for re-examination of pending applications are considered on a discretionary basis.

Re-examination can be conducted based on additional grounds beyond those available under third-party observations or third-party examination, so this approach can be more powerful in some scenarios.  

As outlined above, whilst re-examination can be conducted based on lack of novelty or lack of inventive step, re-examination can be conducted on additional grounds including: 

  • – the invention is not useful,  
  • – not a manner of manufacture,  
  • – the claims are not clear and succinct, or 
  • – the claims are not supported by the specification.  

Whilst re-examination is another ex-partes procedure, on account of the expanded grounds of invalidity that are available, re-examination can provide additional angles to attack the specification based on internal weaknesses which may be present.   

While re-examination is technically possible before grant at the discretion of the Commissioner, in practice this rarely occurs.  

When re-examination occurs after grant of the patent, the only claim amendments that are allowable are claim narrowing amendments, i.e., it is not possible to amend the claims in a way that broadens the scope of protection.   

The Patent Office is not permitted to re-examine a patent in relation to which court proceedings are pending, such as infringement or revocation proceedings.  

An opposition to the granting of a patent can be filed within 3 months of the acceptance being formally advertised. This process is inter-partes, meaning that both the patent applicant and opponent have several opportunities to submit evidence in support of their case. Evidence is normally provided in the form of declarations made by suitably skilled experts, and the matter is decided at a Patent Office hearing by a senior delegate of the Commissioner.

The opposition process can take several years from end to end, and the decision of the Patent Office may be appealed at the Federal Court of Australia.

In practice there are two types of opposition, namely substantive oppositions (opposition to the grant of a patent) and procedural oppositions which are typically oppositions to an amendment or extension of time request. This article focuses on substantive oppositions.  

Whilst the opposition timeline will vary case by case, the normal stages of a patent opposition are as follows: 

Opponent files Notice of Opposition
This must be filed within 3 months of acceptance and corresponds with the deadline for the applicant to file any divisional applications. For this reason, it can be beneficial for applicants to file one or more divisional applications for important inventions, as this preserves the right to make amendments, which may become desirable as the opposition progresses. 

Opponent files Statement of grounds and Particulars
This sets out the opponent’s case at a high-level and identifies the prior art documents that will be relied on. 

Opponent’s Evidence in Support
The evidence is normally provided in the form of one or more declarations by suitably skilled experts in the field of the invention. 

Applicant’s Evidence in Answer
The applicant’s evidence is also made in the form of declarations by one or more alternative experts, and addresses the earlier evidence put on by the opponent.  

Opponent’s Evidence in Reply
The opponent’s evidence in reply is the final evidentiary stage and will be directed at rebutting the Evidence in Answer.  

Hearing – may be presented orally or by written submissions only
The parties will be given a short period of time (normally 10 days for the opponent and 5 days for applicant) to submit a summary of their case before the hearing. The hearing is then held, either by written submissions, or more routinely in person. 

Due to the significant amount of work involved, running an opposition will be far more costly than the earlier described options for challenging the validity of a patent application. However, the inter-partes nature of this process gives the opponent more involvement and control of the outcome, and this can be particularly useful when the case for invalidity is based predominantly on a perceived lack of inventive step. This is because inventive step must be assessed considering whether the invention would have been “obvious to a person skilled in the relevant art.”  

As the Patent Office Examiners are not technically “persons skilled in the art,” the opposition process allows the opponent to present and support a position on inventive step that may differ from the earlier outcome of examination.  

The final pathway to challenging the validity of a patent after grant is to seek revocation before the Federal Court of Australia. Revocation proceedings may be based on all grounds of invalidity.

It should be noted that the party seeking revocation is not permitted to remain anonymous, and such revocation attempts are commonly countered with a cross-claim for infringement.

Running a Federal Court case in respect of patent revocation and a subsequent infringement cross-claim is a large and time-consuming undertaking. For this strategy to be commercial justifiable, the commercial value of the patent would need to be considerable for a third party to justify seeking revocation.  

When seeking revocation, additional grounds are available, such as that the patent was obtained by fraud, false suggestion, or misrepresentation. In contrast, these grounds are not available in oppositions. 

In practice, many revocation proceedings settle before proceeding to a hearing on commercial terms, which could include the patent owner agreeing to grant a license or voluntarily amending the patent claims.  

If you have concerns about a particular patent or patent application, please contact us. There are steps we can take such as maintaining a watch of the Australian Patent Office databases to identify the status of an application and follow prosecution developments, to determine if (and when) intervention may become desirable.