PATENT OPPOSITIONS IN AUSTRALIA

Australia has a pre-grant patent opposition system that permits any party to challenge the granting of a patent.

An Australian patent opposition involves the submission of evidence from the Opponent and the Patent Applicant, usually in the form of submissions from expert witnesses.?After the evidence stages, written submissions are made by both parties, and a hearing is held before a Delegate of the Patent Office.?

Details of the steps in the opposition process are provided below, along with a flow chart.

Grounds of opposition

The available grounds of invalidity in a substantive patent opposition are:

• the claimed invention is not a “manner of manufacture” (i.e., the claimed invention does not relate to patentable subject matter);
• the claimed invention is not novel;
• the claimed invention does not include an inventive step;
• the claimed invention is not useful (i.e., the claimed invention does not work);
• the specification does not describe the invention in a sufficiently clear and complete manner;
• the claims are not supported by the matter disclosed in the specification;
• the specification does not disclose the best method known to the applicant of performing the invention at the time of filing;
• the claims are not clear; and
• the Patent Applicant is not entitled to grant of the invention.

Notice of opposition

A notice of opposition must be filed within 3 months of the advertisement of acceptance of the patent application.?The notice does not contain details of the grounds on which the opposition is based and merely serves to notify the Patent Applicant and the Patent Office that an opposition has been commenced.

Statement of grounds and particulars

The Opponent must file a statement of grounds and particulars within 3 months of filing the notice of opposition. ?The statement sets out the grounds on which the patent opposition will be based (e.g., lack of novelty, lack of inventiveness, lack of support, etc) and provides particulars of the grounds and the prior art documents the Opponent intends to rely on.

During the course of preparing evidence, the Opponent may become aware of additional facts in support of the grounds (i.e., additional particulars). ?If this is the case, the Opponent may request amendment of the statement to update the particulars. ?However, adding a new ground of opposition is treated differently to adding particulars and, typically, the grounds can only be amended to correct an error or omission.?As such, it is common practice to cover all grounds of opposition in the statement that may be relevant, even if they are not subsequently pursued.

Evidence-in-support

Evidence will normally be filed by the Opponent in support of their case. ?This is called evidence-in-support and must be filed within 3 months of filing the statement of grounds and particulars.

The evidence-in-support is typically in the form of prior art documents and detailed declarations by technical experts.?This is somewhat different to European practice, for example, where patent attorneys commonly draft written submissions in the absence of expert testimony.?Attorney declarations are given little weight by the Australian Patent Office compared to expert statements.?The technical experts will usually provide comments on who is the person skilled in the art (PSA), what was published or used before the priority date of the patent application (i.e., the prior art), the state of common general knowledge (CGK) at the priority date, the interpretation of technical terms in the patent application or the prior art, and whether the claimed invention would be obvious to the PSA in light of the prior art and CGK.

Evidence-in-answer

The Patent Applicant will normally file evidence-in-answer that addresses the case presented in the Opponent’s evidence-in-support. ?Such evidence is also usually in the form of declarations by technical experts and must be filed within 3 months of the evidence-in-support.

Evidence-in-reply

The Opponent has the option to file evidence-in-reply to the Patent Applicant’s evidence-in-answer within 2 months.?Evidence-in-reply that contains evidence of new matters will not normally be considered in the determination of the opposition.

Extensions of time

The Patent Office may extend an evidentiary period only if satisfied that:

• the party seeking the extension has made all reasonable efforts to comply with all relevant filing requirements, and has been unable to file their evidence despite acting promptly and diligently to ensure it is filed in time; or
• there are exceptional circumstances that warrant the extension.

Hearing

Once the evidentiary stages are complete, the opposition is set down for a hearing before a Delegate of the Patent Office (usually a Senior Patent Examiner), who has the discretion to hear the parties by way of written submissions only or via an oral hearing. ?The timing of the hearing is dependent on the availability of all parties, but should takes place within 2-4 months after the end of the evidentiary stages.

For oral hearings, the Opponent has until 10 days before the hearing to file a summary of submissions, while the Patent Applicant has until 5 days before the hearing to file their summary.

At the hearing, the Delegate considers the case presented by each party and is free to ask questions or to seek clarification.?The hearing generally takes less than a day and a decision is typically issued at around 3 months.

If the opposition is successful, the Patent Applicant will usually be given the opportunity to amend the claims to overcome the deficiencies identified in the decision.?The allowability of any amendments will be considered by the Delegate and may be challenged by the Opponent.

Appeal

The decision of the Delegate may be appealed to the Federal Court of Australia within 21 days of the decision and will be heard de novo.

Alternatives to patent oppositions

There are several alternatives to patent oppositions:

• Before grant, any party may file a notice of assertion of invalidity to make the Patent Office aware of prior art relevant to the novelty and inventiveness of a pending application.?While the party may file observations with the notice, this is the extent of their involvement.?If the observations in the notice are convincing to the Examiner, an adverse examination report may issue for the Patent Application to address.
• After grant, any party may request re-examination of a patent and file prior art documents along with observations and/or evidence.?The Patent Office will then issue a re-examination report that addresses all documents provided in the request and includes positive or negative statements regarding each claim (it is possible that the report will be positive in respect of every claim).?In the case of an adverse report, the Patentee has 2 months in which to respond to the Examiner’s findings (the requesting party takes no further part in the re-examination proceeding).
• After grant, any party may apply to the Federal Court of Australia to invalidate a patent by revocation. ?A cross-claim for revocation may also be brought should the Patentee seek to enforce the patent.?The duration of patent litigation in Australia can vary widely depending on the issues in dispute and procedural issues arising between the parties.?In general, it will usually take around 18-24 months for a case to reach trial and can take around 6-12 months for a judgment to issue thereafter.?