Re-examination of patents

Our firm has a specialist re-examination practice, in particular in relation to the re-examination of patents in the pharmaceutical & life sciences sector, and in the electrical engineering, software and IT space.

Any person may request re-examination of a patent at any time during the term of a patent. Prior to grant there is no obligation on the Patent Office to re-examine a patent application in response to such a request. In contrast, once a patent has granted, the Patent Office has to conduct a re-examination of the patent on request from a third party. In some instances, re-examination of a patent application may be entered into through an opposition procedure.

Recent changes in law expanded the grounds of invalidity to be considered during re-examination of a standard patent. This has resulted in the re-examination grounds now according with the grounds considered during substantive examination of the patent application. In particular, the grounds of novelty and inventive step have been expanded by including into the definition of prior art the doing of an act. In addition, grounds other than novelty and inventive step can now be considered during re-examination, including whether the claimed invention:

  • is a manner of manufacture (ie patentable subject matter);
  • is useful (ie whether the claimed invention has specific, substantial and credible utility, and meets the promise of the invention);
  • is adequately described in and supported by the specification; 
  • relates to human beings and/or processes for the generation of human beings.

In addition, the standard of proof to be met by the patent applicant during re-examination has been raised to the civil standard of balance of probabilities (meaning that the Commissioner must be satisfied that it is more likely than not that the relevant patent is valid on the relevant ground). This brings the standard of proof in line with that applied by the court. With these changes, re-examination proceedings are useful in a wider range of circumstances.

Re-examination is an ex-parte proceeding. The party requesting re-examination compiles its documents and files them with the Australian Patent Office. Once the patentee (or patent applicant) is given an opportunity to respond, an examiner will consider the documents received by the requesting party and any responsive materials received from the patentee. The Patent Office then enters a dialogue with only the patentee in order to establish whether the claims are valid, either as currently framed or in an amended form proposed by the patentee. The requesting party takes no further part in the re-examination proceeding. This is in contrast to the inter-parte opposition procedure.

Requesting re-examination does not affect the right of the requesting party to apply to revoke the patent at a later date. However, the Patent Office will not re-examine a patent in relation to which court proceedings (including infringement or revocation proceedings) are pending.

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