Lower Cost Alternative to Challenging Australian
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
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
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
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
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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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