Answer ... The validity of an issued patent can be challenged in court by commencing revocation proceedings. The challenge usually takes place in the Federal Court. Federal Court registries are located in each state and territory in Australia. The originating party can determine jurisdiction.

The validity of an issued patent can also be challenged in the Australian Patent Office by instituting re-examination proceedings.

In the case of a certified innovation patent, validity can also be challenged by commencing opposition proceedings at IP Australia.

Answer ... In the case of court proceedings, papers are filed - typically, with the Federal Court - seeking an order that the patent is partially or entirely invalid.

At a fairly early stage, a case management hearing may be scheduled to determine a timetable for the filing of grounds and particulars, defence and evidence. If the matter does not settle beforehand, it will go to trial before a single judge at first instance. Judges hearing patent matters are drawn from a specialist panel. Decisions of the Federal Court are appealable to an expanded bench (at least three judges) and ultimately, if important matters of law are at issue, the matter can be appealed to the High Court.

Validity can also be challenged at the Australian Patent Office. In this case, a request for re-examination is filed by the party seeking revocation. The invalidating art and any other evidence or submissions must be provided along with the request to re-examine the patent. The Australian Patent Office must consider such a request and must re-examine the patent. However, once the re-examination process has commenced, the requestor has no ongoing role and the process becomes ex parte between the patentee and the Australian Patent Office. The Australian Patent Office will issue a report which, if necessary, can be addressed by argument or amendment.

In the case of a certified innovation patent, validity can be challenged by commencing opposition proceedings at IP Australia, which operates along similar lines to the pre-grant opposition proceedings conducted in relation to a standard patent. A successful opposition to an innovation patent will result in the innovation patent being revoked.

Answer ... Under Australian law, the validity of one claim doses not necessarily affect the validity of any other claim. Thus, unless there has been some fraudulent behaviour by the patentee, a patent per se is not generally invalidated; rather, one or more (or all) of the claims may be held invalid.

A patent claim may be held invalid for any one or more of the following reasons:

• The claimed invention is not a ‘manner of manufacture’ (ie, not proper subject matter for a patent, such as a natural phenomenon);
• The claimed invention is not novel;
• The claimed invention does not exhibit an inventive step;
• The claimed invention is not useful;
• The claimed invention was secretly used in the patent area before the priority date by or with the authority of the patentee or its predecessor in title;
• The specification does not describe the invention in a sufficiently clear and complete manner;
• The specification does not disclose the best method known to the applicant of performing the invention;
• The claims are not clear;
• The claims are not supported by the matter disclosed in the specification;
• The applicant is not entitled to grant of the invention (ie, the inventorship or ownership is incorrect; or
• The patent was granted by fraud or false suggestion.

Answer ... There is an onus on the party bringing the action to demonstrate that the patent is invalid.

The standard used by the courts and by the Australian Patent Office is the ‘balance of probability’ test. This requires the person making the decision - whether an examiner of first instance or a judge at the appeal stage - to weigh up the allowable evidence and decide, in the case of conflicting evidence, what the most probable finding of fact should be.

The rules of evidence are not strictly applied in proceedings before the Australian Patent Office, which is considered to be a tribunal and not a court. In patent hearings, the person making the decision will generally weigh up all the evidence presented. There is broad discretion as to how much weight the decision maker will give to any part of the evidence. For example, hearsay evidence is permissible in Australian Patent Office proceedings, although the decision maker will consider how reliable and probative it is and will give it appropriate weight. Hearing officers in the Australian Patent Office are usually highly technically skilled, but have only limited legal training, so the emphasis is to arrive at a correct outcome where both parties are given natural justice.

Previously, the Australian Patent Office used an evidentiary standard where the patent applicant received the benefit of the doubt. A patent application would proceed to grant unless it was practically certain that the subsequently granted patent would be invalid.

The rules of evidence are applied more strictly in court proceedings. Formal challenges to the admissibility of evidence may be made.

In the case of alleged infringement of a patented process for preparing a product, the onus reverses to the alleged infringer if the product is identical to the product obtained by the patented process. In that case, in the absence of proof to the contrary, the defendant’s product will be taken to have been obtained by the patented process.

Expert evidence is generally put on in opposition and court proceedings, and may in some cases also be used in ex parte proceedings in the Australian Patent Office, such as re-examination. Expert evidence is generally confined to matters of technical fact and the state of the common general knowledge. Evidence from the parties may also need to be weighed in cases where inventorship is in dispute.

In proceedings before the Australian Patent Office, evidence is almost invariably presented in the form of a signed declaration. In patent opposition proceedings, the opponent presents its evidence in support, which is then responded to by the applicant’s evidence in answer. The evidence in these rounds is broad ranging and the parties are free to address any issue they see fit. There is a further round of evidence in reply from the opponent. Evidence not strictly in reply may be given reduced weight. In general, the Australian Patent Office is unsympathetic to requests to file additional rounds of evidence or to allow additional time, even in cases where the parties might be in agreement.

In court proceedings, the plaintiff first provides its evidence in chief, which is then responded to by the defendant. The courts generally adopt a more flexible approach and will in most cases consent to an evidentiary schedule agreed by the parties. This is often necessary as the court will usually be dealing with invalidity as part of a counterclaim to infringement.

Witness statements are almost never tested by cross-examination in Patent Office proceedings, but they are in court proceedings. Expert witnesses for the parties are often required by the court to consult and prepare a joint report in which they set out points of agreement and points of difference. The witnesses may then be required to provide conjoint evidence, where they are examined and cross-examined together on the relevant issues.

Answer ... As indicated above, once a patent grants, the only options for a third-party challenge are revocation through the courts or re-examination through the Australian Patent Office. However, Australia has a post-acceptance/pre-grant opposition system which provides an effective procedure for challenging the grant of a patent. Being pre-grant, it gives third parties the chance to challenge the grant of a patent before the patentee can bring an action for infringement.

The opposition process is inter parte, which tends to add to the overall cost of proceedings; however, patent oppositions are still significantly cheaper than court proceedings. The hearing officer will usually have a solid technical background, so pursuing an opposition can be advantageous where the subject matter is technically complex.

Answer ... Anyone can oppose a granted patent. It is not necessary to identify the real party in interest. An opposition can be pressed using a strawman as the actual opponent.

The use of a strawman can present some practical difficulties. For example, if circumstances arise with the true opponent that would otherwise justify an extension of time for filing evidence, the strawman will be unable to rely upon those circumstances. It is generally advisable also to have an agreement in place between the strawman and the true opponent to ensure, for example, that the true opponent retains the right of appeal.

Answer ... An opposition must be commenced within three months of acceptance of the application being advertised in the Australian Official Journal of Patents. All that is required at this stage is the filing of a notice of opposition, nominating the opponent of record and commencing the proceedings. This deadline is not extensible under normal circumstances and will be available only in case of error or omission, or circumstances beyond the parties’ control. In the absence of an opposition by the deadline, the patent issues as soon as practicable, which is typically less than a month. If a request for an extension of time to file an opposition is made after grant, opposition is impossible.

A request for re-examination may be made at any time after acceptance of the application. If the request is made pre-grant, the commissioner of patents can re-examine the case, but is not compelled to do so, and indeed is unlikely to take such a step. However, if the request for re-examination is made after grant, the commissioner must re-examine the patent.

A certified innovation patent can be opposed at any time.

Answer ... The grounds of opposition are only slightly less broad than those available to the courts. During opposition, the following grounds may be pressed:

• The claimed invention is not a ‘manner of manufacture’ (ie, not proper subject matter for a patent, such as a natural phenomenon);
• The claimed invention is not novel;
• The claimed invention does not exhibit an inventive step;
• The claimed invention is not useful;
• The specification does not describe the invention in a sufficiently clear and complete manner;
• The specification does not disclose the best method known to the applicant of performing the invention;
• The claims are not clear;
• The claims are not supported by the matter disclosed in the specification; or
• The applicant is not entitled to grant of the invention

The Australian Patent Office will not consider invalidating prior secret use by the applicant during opposition proceedings. Because opposition proceedings are pre-grant, the Australian Patent Office is unable to determine whether a patent has been granted as a result of fraud or false suggestion.

Answer ... One possible outcome is that the opposition is fully dismissed, with no grounds made out. The patent will then proceed to grant, unless the opponent appeals the decision to the courts.

If some or all grounds of opposition are found to be made out, the hearing officer will allow the applicant a two-month window to propose amendments to overcome the deficiencies identified in the decision.

The allowability of the amendments will be considered, and these may themselves be opposed based on a lack of support or lack of clarity, or if they broaden the claims as accepted. Once the allowability of the amendments is settled, the parties make submissions as to the effectiveness of those amendments in overcoming the deficiencies identified in the original decision. A further hearing may take place if the issues are complex. The hearing officer will subsequently make a final determination as to whether the application can proceed to grant.

Once a final determination is made, that decision may be appealed to the court.

Answer ... The onus is on the party bringing the opposition to demonstrate that the patent, if granted, would be invalid.

The hearing officer applies the same standard as the court, which is a ‘balance of probability’ test. That requires the hearing officer to weigh up the available evidence and decide, in the case of conflicting evidence, what the most probable outcome should be. As mentioned above, the strict laws of evidence do not apply in Australian Patent Office proceedings.

Answer ... Appeal is available on any of the grounds pressed during the opposition. New evidence may be presented by either party in the appeal.

In addition to an appeal from an opposition decision, if the patent ultimately proceeds to grant, then revocation proceedings may be commenced by any party, including the original opponent.

It is generally advantageous to proceed with the appeal of an opposition if possible, as this will delay the granting of the patent, because the patent applicant cannot commence an action for infringement or secure an injunction until and unless such an appeal is concluded in its favour.