Why patent professionals should take a second look at re-examination

Australian patent law allows for re-examination of granted Australian patents by IP Australia, the national Patent Office, as an alternative to seeking revocation before the courts. If the re-examined patent is found to lack novelty or inventive step, it may then be revoked by the Patent Office. The re-examination provisions are similar to those provided under US law, in that they allow any person to request re-examination of a granted patent.

Re-examination is under-utilised as a tool in Australia because of the number of significant disadvantages when compared to revocation proceedings before the courts. However, it is still significantly cheaper and also faster than revocation proceedings. Despite this, the Australian patent profession has so far been hesitant to use re-examination to attack the validity of an Australian patent, as few requests for re-examination have ultimately succeeded in invalidating a patent.

A prior art search is essential to any re-examination in order to identify prior art that clearly anticipates the claims of the Australian patent. However, unless a single document is found to support this, there is a low likelihood of the patent ultimately being found invalid under re-examination. That is, while re-examination may succeed on the ground of lack of novelty, it is unlikely to succeed on the ground of lack of inventive step. This is at least partially due to the nature of Australian re-examination proceedings.

The only grounds of invalidity considered in re-examination are novelty and inventive step. Information that became publicly available only through the doing of an act may not be considered during re-examination. While this does not prevent the lodging of expert evidence regarding the common general knowledge of a person skilled in the art (which is highly relevant to determining inventive step), it does result in the need for each element of the common general knowledge to be shown as a documentary disclosure.

Further, while the person requesting re-examination must provide prior art and a statement of relevance with the re-examination request, he or she then has no further involvement in the re-examination process. However, the patentee has (multiple) opportunities to respond to the examiner and to supply argument and evidence regarding common general knowledge and inventive step. In practice, patent office examiners typically are not in a position to sustain an inventive step objection in the face of evidence and argument submitted by the patentee as to the state of the common general knowledge of a person skilled in the art. As the person requesting examination has no right of reply or further involvement in the re-examination process, any arguments or evidence submitted by the patentee cannot be refuted. Accordingly, it is only in a prima facie case of lack of novelty that re-examination is a truly worthwhile exercise in a commercial context.

Re-examination should always be considered as a potential alternative (or preliminary) to initiating revocation proceedings in the Federal Court. However, a granted patent that survives re-examination can (in a commercial context, if not a legal one) be considered to have a higher presumption of validity and give the patentee additional leverage in commercial negotiations. The re-examination can also identify for the patentee any weaknesses in the patent prior to any litigation, giving it the opportunity to amend the patent to put it in better order. Accordingly, re-examination should be approached with caution, used only when very highly relevant prior art is available (preferably a prima facie case of invalidity on the ground of novelty), and the potential risks should be considered prior to requesting re-examination.

Re-examination is potentially an effective strategic tool where a patent of clearly dubious validity affects business activities in the Australian market.