This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.
What is it?
A patent re-examination is a means for challenging the validity* of a granted patent. In certain situations, such as being accused of infringement, the validity of the patent may come under heavy scrutiny. This can be requested at any time after a patent is granted by filing a request with IP Australia. Patent re-examination can be requested if you believe the patent should not have been granted for a variety of reasons, including;
- The invention claimed in the patent isn't novel, innovative or inventive (this is the most common reason)
- The invention isn't something that can be patented
- The invention was used in public before the patent was filed
- The patent specification doesn't provide enough detail to build or perform the invention
- The invention isn't consistent with the description
- The claims are so unclear that it's impossible for a skilled person to understand them
- The invention is a biological process for generation of human beings (such as human cloning).
*the validity of a patent regards its compliance with the Patents Act, i.e. if it should have been granted in the first place (or has new evidence come to light that indicates it should not have been granted).
What are the benefits?
A patent re-examination provides a relatively affordable and expedient means of challenging the validity of a patent.
The re-examination process also allows for the submission of documents and supporting evidence from the challenging party, including citations which may not have been considered when the patent was examined.
One additional benefit of the re-examination process, is that it operates independently of the court system, meaning that it will not prejudice any subsequent litigation (i.e. it won’t influence a judge in a court case). Note that re-examination decisions may be appealed to the Federal Court.
What are the risks?
There are some risks associated with the patent re-examination process.
While the costs associated with a re-examination request are low, there is still the possibility that the challenging party will not be successful, and the patent will be maintained. Notably, the re-examination process also allows the patent holder to amend their claims; in some cases, allowing them to circumvent the grounds on which the patent was challenged.
Another significant risk associated with re-examination, is that the process is ‘ex parte’, meaning that after the initial submissions to the Patent Office, the challenging party is not involved in the proceedings at all. As such, if the outcome of the re-examination is not in favour of the challenging party, they have few options to refute the outcome (although, another re-examination can be requested).
Requesting a re-examination will also inform the other party of your request, potentially harming professional relationships and increasing the possibility that the other party may act more defensively or even contest your own rights.
What are the possible outcomes?
There are 4 possible outcomes from the patent re-examination process:
- The patent is upheld in its original form
- The patent is upheld in an amended form
- The patent is revoked
- In rare cases, IP Australia may not consider the re-examination request reasonable and refuse to re-examine the case.
If the challenging party remains unsatisfied, they are able escalate to invalidity proceedings in court (at significantly higher cost).
What might the costs be?
Each patent re-examination request costs $800, paid to IP Australia.
Additionally, if you have an attorney acting on your behalf, you may be liable for additional legal fees.
How might time might be involved?
A re-examination report will be provided within 8 weeks from receiving the first response. In cases where the initial re-examination report is adverse (i.e. that the patent should not have been granted), the patentee may amend the claims, and subsequent reports may be issued, this may take significantly longer (typically 4-6 months).
How much is this used?
This is still being investigated and will be updated as the tool is refined.
Who can use this?
Any person (in their capacity of natural or legal persons) may request re-examination of a patent.
Who’s involved?
- The challenging party (you).
- The patent holder.
- IP Australia (patent examiner and supervising examiner).
Notably, after the initial request filed by the challenging party, all subsequent proceedings are between IP Australia (a patent examiner and a supervising examiner) and the patent holder.
What do you need to proceed?
Ensure you have a valid reasons for suggesting that a patent is invalid, such as a lack of novelty or inventive step (section 7 of the patents act), or a lack of support or enablement (sections 40(2)(a), 40(3)).
Supporting evidence (if any) - such as evidence of prior art existing before the priority date of the patent, which that may invalidate the patent.
Completed the relevant forms from the IPA website Request A Re-examination Of A Patent | IP Australia
Before you take any action, you should consider whether you need legal or professional advice specific to your situation. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success. IP Australia provides information on getting professional assistance with your IP. In addition, the Institute of Patent and Trade Mark Attorneys Australia (IPTA) offers free 30 minute consultations with an attorney.