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3 June 17: Post grant patent re-examination in Australia and NZ

2017 June 4 by

Post grant re-examination in Australia and New Zealand

Both Australia and New Zealand have provisions allowing attacks on patents after they have been granted and sealed.  In both cases, the circumstances and means by which patents can be challenged post-grant are more limited than pre-grant.  This is clearly for the purposes of providing robust patent rights, balanced against the need to ensure only quality inventions are protected.

One way to challenge a patent post-grant in both jurisdictions is via re-examination by the Commissioner (ie. the IP Australia or IPONZ).  This is not an “opposition” per se but nevertheless a means by which a patent could be revoked.

The provisions are very similar in both countries.  In Australia, under section 97 of the Patents Act 1990 (Cth) (hereafter the AU Act) and New Zealand under section 95 of the Patents Act 2013 (hereafter the NZ Act), there are three instances in which re-examine of a standard patent can occur post-grant, namely:

  1. The Commissioner must re-examine a standard patent if any person (including the patentee) requests re-examination of the patent (unless there is a “relevant proceeding”);
  2. The Commissioner may re-examine a standard patent of his/her own motion (unless there is a “relevant proceeding”); or
  3. When a Court directs the Commissioner to re-examine a patent.

In Australia, under Patent Regulations 1991, the request must be in the approved form and must state (a) the grounds of the request and (b) the reasons why the grounds are relevant (Reg. 9.2).  Additionally, if lack of novelty or inventive step is one of the reasons, if the requestor does not include supportive documents (ie. prior art), then the Commissioner may decide not to re-examine (Reg.9.2(4)).

In New Zealand, the request for re-examination must include (a) a statement that sets out the facts in support of the grounds that the person making the request wants the Commissioner to consider; and (b) any information or documents relied on in support of the request and a statement as to their relevance.

In both jurisdictions there is no new search undertaken, so only prior art provided to the Commissioner as part of the request or otherwise coming to the Commissioner’s attention will be included as prior art.  And in both countries, the procedure is ex parte such that the requester takes no further part once they initiate the procedure.

In New Zealand, the grounds considered under re-examination are the same as for oppositions or revocation (i.e. the grounds under of section 92 or 114).  In Australia, since the Raising of the Bar came into force, all matters considered during normal examination (ie. section 18 and 40) can be reconsidered, except for unity of invention.

After re-examination has been conducted, a report may issue from the relevant Patent Office to which the patentee then has two months in Australia[1] and three months in New Zealand[2] to file a response.  Further responses and/or a hearing may follow.  The patentee must be given the opportunity to be heard under both regimes[3] and the opportunity to amend the specification to overcome any objections[4] but if he/she ultimately fails to overcome any reasons for invalidly, the patent is revoked, in whole or in part.[5]

Appeals are allowed by the patentee in Australia or persons aggrieved in New Zealand (which would include the patentee) to the Court are allowed.[6]

Thus, in both jurisdictions any person, the Commissioner or a Court can request the re-examination of a granted patent on essentially all grounds on which it was initially examined.  The procedures of re-examination are very similar in both countries.

[1] Regulation 9.4(1)

[2] Regulation 97.2

[3] The AU Act section101(2); the NZ Act section 99(2) by implication

[4] The NZ Act section 99(2); the AU Act section 101(2)(b))

[5] The NZ Act section 99(1); the AU Act section 101(1)

[6] The NZ Act section 214); the AU Act section 101(4)

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1 July 16: How to secure a patent filing date in Australia

2016 July 1 by

Mechanism to secure filing date without filing formal patent application

Under the Patent Regulations 1991 (Cth) Regulation 3.5 to obtain a filing date all that is required is

(1)(a) information in English that indicates that what is filed is intended to be an application for a patent;

(1)(b) information that allows the identity of the applicant to be established or allows the applicant to be contacted by the Patent Office;

(1)(c) information that appears to be a description (which need not be in English, Regulation (2))

Accordingly, a document less than a provisional or complete application can be used to obtain a filing date in Australia.  If using this method, an amendment should be filed as soon as is practicable to cure any formality deficiencies.  New matter can also be added by filing additional provisionals.

However, it should be noted that the filing date is not always the same as the priority date.  According to section 43(2) of the Patents Act 1991 (Cth), the priority date of any particular claim is the date of the filing of the specification (unless provisions under the Regulations apply).  However, the invention must be described in the priority document in a way that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art (section s40(1)). Therefore, if the thing that “appeared to be a description” in the original document was not clear enough and complete enough for the invention to be performed then while a filing date was secured, a priority date was not.   Thus, this method should be used with caution.


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