Tactics for opposing patents in Australia

It is not unusual for companies that value their own intellectual property and are aware of their competitors’ intellectual property, as well as the IP landscape, to keep a watch out for the acceptance and/or grant of patents by competitors or related entities.

Australia operates a pre-grant patent opposition system. This means that a company can watch for the acceptance of a patent application of interest and then formally oppose the grant by filing a notice of opposition, which must take place within three months of the advertisement date of acceptance. To make best use of this strategy, a company is advised to approach the opposition with a clear game plan; the 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, then an opposition might seek to invalidate the claims of the patent or restrict the scope of the claims granted, and/or leverage a licensing deal. In addition, an opposition might be filed primarily to frustrate the patent applicant and to delay grant of the patent.

In Australia, it is possible to request re-examination of a patent application for a standard patent and 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 consider re-examining an application during opposition only if there is a real chance that the opposition proceedings can be curtailed and if all parties agree to the re-examination. If re-examination takes place it will be limited to the issues of novelty and the inventive or innovative step, and will 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 where it has relevant prior art which was not considered during the original examination. This tactic can be used in parallel with the opposition process and may result in one of the following scenarios.

First, the re-examination of an opposed patent application prior to any service of evidence in the opposition process may result in the curtailment of the opposition, 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.

Second, in a case where there are multiple opponents, a request for re-examination by one opponent, even if disallowed, can be strategic. The Australian Patent Office provides a copy of a request for re-examination to all parties involved when seeking consent for re-examination, meaning that other opponents receive access to details of relevant prior art, which 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.