Patent opposition practice: Raising the Bar, considerably!

The Australian patent opposition provisions are an effective tool for many companies in ensuring their freedom to operate and otherwise providing a second check of the examination system.

The procedure is a simple notice of opposition, with a requisite fee of A$600, filed within three months of the patent being accepted. A statement of grounds and particulars must then be filed within three months of the notice of opposition, before relatively standard evidentiary rounds commence:

• The opponent has three months to file evidence in support.
• The applicant three months to file evidence in answer.
• The opponent then has an optional further three months to file evidence in reply.

Once evidentiary rounds are complete, a hearing will be organised relatively quickly and the matter decided shortly thereafter, at least in theory. If those timelines are adhered to, a decision will be issued in a year or perhaps 18 months later.

The reality is that the extension of time provisions for the evidentiary rounds are heavily utilised and a decision is usually issued at least two and a half years after the opposition is filed, making it nearly three years from acceptance. Extensions of time, although expensive at A$500 a month in official fees, are relatively easy to obtain in three-month increments, as long as progress is being made. Any challenge to an extension of time is difficult to win and often fruitless. Completing evidence in support within 12 months is often considered expedient.

These delays are largely due to the requirement to provide expert evidence to establish the skilled person’s knowledge at the priority date. This is compounded by the need for that evidence to be from an Australian perspective, as it is what the skilled person would have ascertained, understood and regarded as relevant. For example, if the skilled person is a lumberjack, he or she may not regularly read patents on the subject, so some prior art, including patent prior art, may not be considered as likely to be ascertained by the skilled person.

The "Raising the Bar" provisions, which come into force on 15th April 2013 (under the Intellectual Property Laws Amendment (Raising the Bar) Act 2012), are set to change Australian opposition practice considerably for the better - but potentially for the worse.

Extensions of time during evidence will no longer be straightforward to obtain. Only the exceptions will be allowed, rather than the norm. This means that it will be necessary to have an expert identified as early as possible. In fact, in order to meet the deadlines, an expert should be engaged as soon as a decision is made to file an opposition, and possibly even before.

Experts, especially in some obscure fields, are hard to find and often even harder to persuade to act as an expert in a patent opposition.

Two changes made by the Raising the Bar amendments relating to inventive step will specifically legislate as follows:

• Common general knowledge will be assessed globally (it is no longer restricted to Australian common general knowledge, if that is different from elsewhere).
• The skilled person can simply “reasonably have expected to combine” two or more pieces of prior art information, rather than having to have ascertained them, understood them and regarded them as relevant.

As a result, international experts can now give opinions without corroborating evidence that the Australian situation is the same as the international expert’s opinion and it is not necessary to demonstrate that the prior art documents would have been readily accessed by the expert – just that they could have been reasonably expected to combine them.

Thus, Australian oppositions will have to be carefully and actively managed to meet the new time constraints, but the evidence from experts may be slightly easier to come by and need not deal with issues such as what information the expert would typically consult and its relevance to Australia specifically. However, the new provisions in relation to inventive step will apply only to applications that have examination requested after 15th April 2013. Therefore, it will be a considerable time before opposition practice sees the benefit that the changes to inventive step practice should bring, while dealing with the more onerous time limits.

Overall, Australia should have a faster opposition procedure, which is good news. But there is a risk that there simply will not be enough time to put adequate evidence together at a reasonable cost, and therefore this may not achieve the overall goal of the Raising the Bar provisions: to raise the quality of granted patents.