Companies that value their own intellectual property (IP) and are aware of their competitors’ and the competitive IP landscape will routinely watch for the acceptance and/or grant of patents by competitor companies or related entities.
Australia operates a pre-grant patent opposition system, which means a company can watch for the acceptance of a patent application of interest and then formally oppose the grant of the patent by filing a notice of opposition. This must take place within three months from the advertisement date of acceptance. If such a strategy is employed, for best effect, the opposition must be approached with a game plan and the opposition tactics used will depend upon the desired outcome and available budget.
If the subject matter of a competitor’s patent application restricts a company’s freedom to operate, an opposition may be used in an attempt to invalidate the claims of the patent or restrict the scope of the claims granted, and/or to leverage a licensing deal. It is also possible that an opposition is filed primarily to frustrate the patent applicant and to simply delay grant of the patent.
The nuts and bolts of re-examination
In Australia, it is possible to request re-examination of:
(i) a patent application for a standard patent, and
(ii) a granted standard patent or certified innovation patent.
Re-examination of an accepted patent application is entirely at the discretion of the Commissioner of Patents. The Commissioner also has the discretion to re-examine standard patent applications and innovation patents under opposition. Practically, the Commissioner will only consider re-examining an application during opposition if there is a real chance that the opposition proceedings can be curtailed and where all parties agree to re-examination taking place. If re-examination is undertaken, it is limited to the issues of novelty and inventive or innovative step, and it does not cover issues such as sufficiency.
A request for re-examination of an opposed patent application is a possible tactic available to an opponent, especially in a case where the opponent has relevant prior art that was not considered during examination of the application. This tactic can be used in parallel with the opposition process and may be beneficial to the opponent. A number of possible scenarios are considered:
1. Pre-emptive re-examination
The re-examination of an opposed patent application prior to any service of evidence in the opposition process may result in curtailing the opposition and ultimately reducing costs associated with compiling evidence. In such a scenario, the applicant would have to consent to re-examination with the Commissioner instigating re-examination and disallowing the application in the light of prior art provided by the opponent.
2. Strategic re-examination
In a case where there are multiple opponents, a request for re-examination by one opponent, even if disallowed, can be strategic. As it is the practice of the Australian Patent Office to provide a copy of a request for re-examination to all parties involved when seeking each of the parties’ consent for re-examination, this has the effect of providing other opponents with the details of relevant prior art that may not have been known to them and can be used by them.
Companies need to consider all available tactics when opposing a patent application. Re-examination during opposition is one tactic and, while it will not be suitable in all cases, it may be strategically desirable in some.
Amanda Jones is a Patent and Trade Mark Attorney and a Principal of Watermark. She can be contacted by calling +61 3 9819 1664 or emailing [email protected]
The information contained in this article is not legal advice. If you do have a legal enquiry you should talk to a Solicitor or Trade Mark Attorney before making a decision about what to do.