Australia’s patent opposition system is well established but it’s important to note the differences between standard patents and innovation patents.

Standard patents

After the Commissioner of Patents accepts a patent application, its acceptance is advertised in the Official Journal. Any person may then oppose the grant of the standard patent by filing a notice of opposition in the approved form within three months of the date on which the patent application was advertised as accepted.

Opposition (in respect of applications for a standard patent made after April 15 2013 or where there was no request for examination made prior that that date – that is, post Raising the Bar patent applications) may be based upon any one or more of the following grounds:

  • non-entitlement;
  • the invention is not a patentable invention (including no manner of manufacture, lack of novelty or inventive step, inutility, prior secret use); and/or
  • the specification does not comply with Section 40(2) or 40(3) of the Patents Act in that the specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, the complete specification does not disclose the best method known to the applicant of performing the invention, or that the claims are not clear and succinct and supported by the matter disclosed in the specification.

For any remaining pre-Raising the Bar patent applications, the above grounds of opposition apply save that under Section 40(2) and 40(3) the requirement is that the claims must be fairly based on matter described in the specification and the specification must describe the invention fully.

Innovation patents

Australia has a second tier patent system known as innovation patents. Inventions that are the subject of innovation patents are generally lower level, incremental inventions. Innovation patents have an eight year term and up to five claims are permitted.

Although the Patents Act 1990 refers to an opposition process which is available in relation to an innovation patent, in effect an opposition to an innovation patent is an action for revocation. Such an action can be commenced in the Patents Office at any time after the innovation patent has been certified. The available grounds for opposition to a certified innovation patent are the same as those for opposition to the grant of a standard patent except that the ground of prior secret use is not available and there is an additional available ground that the innovation patent claims a plant or animal, or a biological process for generating a plant or animal.

What form and standard of evidence is required to support or defend an opposition and when should it be submitted?

The evidentiary phase of a standard patent opposition commences with the provision of evidence in support of the opposition by the opponent. The evidence is due to be filed not more than three months after the date when the statement of grounds and particulars of opposition was lodged with the Patents Office (subject to any extension of time). The statement, in turn, has to be lodged within three months of the filing of the notice of opposition. In the case of an opposition to an innovation patent evidence in support has to be filed at the same time as the notice of opposition and the statement of grounds and particulars.

Typically, the evidence in support of an opposition will address each of the asserted grounds upon which the grant of the patent is opposed. Because issues of claim construction are likely to be involved in most patent oppositions, as well as technical issues relating to anticipation and inventiveness (or innovation in the context of an innovation patent) it is usual for the evidence in support of opposition to include evidence from one or more qualified experts.

Evidence is in the form of a statutory declaration.

Whether or not the opponent has served any evidence in support of the opposition, the patent applicant may serve evidence in answer. That evidence is due to be filed (subject to any extension of time) not more than three months after the date when the Patents Office provides the relevant party with the evidence in support and informs that party that all the evidence in support has been filed or, in the absence of any evidence from the opponent, within three months of the date when the Patents Office notifies the party that no evidence has been filed.

The evidence in answer is also in the form of statutory declarations and is likely to include declarations from one or more expert witnesses.

If evidence in answer is filed, but not otherwise, the opponent may serve evidence in reply to the applicant's evidence in answer. Any evidence in reply must be filed within two months of the date that the Patents Office provides the opponent with the evidence in answer and informs the opponent that all the evidence in answer has been filed.

The evidence in reply is supposed to be just that – in reply to the evidence in answer and is not intended to provide the opponent with an opportunity to remedy deficiencies in the case that it has already advanced. Although, in extreme cases, "new" evidence put in under the guise of evidence in reply may be ruled inadmissible, in most instances that Patents Office will consider such material, although there may be cost consequences for the opponent.

The form of evidence and the sequential steps for filing such evidence in the case of opposition to an innovation patent application are the same as those in relation to a standard patent opposition except that the evidential phase begins earlier than in the case of a standard patent opposition (see above).

Who decides the outcome of the opposition, and how and when is the decision made and presented to the parties?

The opposition is determined by a delegate of the Commissioner of Patents. The delegate is usually a senior Patents Office examiner who has background and experience in the technical area of the invention of which is the subject of the opposition. The Commissioner of Patents must set the matter down for hearing if asked to do so by one of the parties once the period for service of evidence has expired or the Commissioner may set the matter down for hearing on his or her own motion. The hearing may be an oral hearing or by written submissions at the Commissioner's discretion. If the hearing is oral the parties must file a summary of submissions before the hearing, the opponents are due at least 10 business days before the hearing and those of the applicant are due at least five business days before the hearing.

At the conclusion of the hearing the delegate will reserve judgment in relation to the opposition and will subsequently deliver a written decision to the parties. There is no set time within which a written decision must be issued – the timing will depend upon the complexities of the opposition, the number of grounds advanced and the workload of the delegate.

What is the form of the oral hearing, what will be discussed and what can you do to improve your chances of success?

Generally the party which has the onus of establishing its case presents its submissions and arguments first. As the opponent carries the onus in a patent opposition it is generally the opponent which presents its case first. However, in some cases the delegate may invite the patent applicant to give a brief description or overview of the invention. Each party is normally given as many opportunities to respond and reply to any matter raised until the parties are satisfied that each of them have presented their case in full.

The meticulous preparation of evidence (whether in support of the opposition or in answer to it) is a key to the ultimate outcome in any opposition. Although, in hearings before the Commissioner, the rules of evidence which apply in court proceedings do not apply, this should not mean that the preparation of evidence is unimportant. Evidence that is prepared in a clear, concise, credible and logical form will provide to the party presenting such evidence a clear advantage over less meticulously prepared material.

The expert evidence which is presented may, permissibly, be from an expert based in Australia or one based overseas. However, if evidence, for example, relating to common general knowledge in Australia is relevant then evidence from an Australian based expert may be logically more probative. Similarly, if an overseas expert has been involved in similar patent opposition processes relating to equivalent patents in other jurisdictions that expert may be seen to be influenced by those other proceedings in a way which affects the probity of the evidence presented in the Australian context. These are all issues which need to be carefully weighed up by the Australian-based legal advisers to the relevant party to the opposition in determining the content and form of the evidence to be presented in the context of an Australian opposition.

The careful preparation and composition of the supporting written submissions by each of the parties is also important to the ultimate outcome of any opposition proceeding.

Needless to say the involvement of experienced local counsel (patent attorneys, solicitors and barristers) is also an important factor which may have implications for the ultimate outcome of any opposition proceeding.

If I lose the opposition, what can I do to turn things round?

In the event that the opponent is successful in establishing opposition to one or more claims of the patent it is usual for the patent applicant to be given the opportunity to amend the patent specification and/or the claims in order to avoid a finding of invalidity. An amendment may, of course, have the consequence of narrowing the patentee's scope of protection. The amendment, itself, can also be opposed.

If either the opponent or the patent applicant is dissatisfied with the outcome of an opposition it may appeal to the Federal Court of Australia. Any such appeal is in the original jurisdiction of the Federal Court and is a hearing of the matter de novo. The Court has broad powers in hearing any such appeal, including the power to admit further evidence which was not adduced before the Patents Office. The Court will view the decision of the Commissioner's delegate below with respect however it must reach its own decision based upon the evidence before it.

Evidence that has been filed before the Patents Office in an opposition may be admitted before the Federal Court if it is not inadmissible according to the rules of evidence that apply in the Federal Court and if the court grants leave for it to be admitted.

Accordingly, it is desirable when preparing evidence in an opposition to have consideration for the prospect that an appeal may be necessary. It is therefore often appropriate to prepare Patents Office evidence in court-admissible form even though that is strictly not required for the purpose of Patents Office proceedings.

In an appeal from an opposition decision, an opponent may rely on any ground whether or not that ground was relied upon in the Patents Office proceedings.

In light of the fact that the appeal to the Federal Court is a hearing de novo, the party who was successful before the Patents Office has no advantage before the Court and the onus lies with the same party which had the onus before the Commissioner.

What are the approximate timescales for the opposition and, if applicable, appeal process? How can this be influenced by the parties?

Given the time limits referred to above (three months after filing notice of opposition to file a statement of grounds and particulars, three months thereafter to file evidence in support of opposition, three months thereafter to file evidence in answer and two months thereafter to file evidence in reply) the opposition ought to be ready for hearing 11 months after filing a notice of opposition. The reality, however, is quite different. Although some oppositions are dealt with relatively quickly and close to the statutory time limits more often one or more of the parties seeks and obtains an extension to the period for filing evidence.

Before the Raising the Bar amendments to the Patents Act in 2013 extensions of time for filing of evidence were commonplace. They are less common since the Raising the Bar amendments which made the criteria for assessment of whether extensions of time ought to be granted or not much more strict. Nevertheless, extensions are not unusual. As a rule of thumb most oppositions would now be set down for hearing approximately 16 to 18 months after the filing of a notice of opposition. A written decision on the opposition should be made available to the parties within three to six months after the hearing.

An appeal from a decision of the Commissioner to the Federal Court must be lodged within 21 days of the date of the relevant decision. Once an appeal has been commenced in the Federal Court it is set down for directions and a timetable is set for the filing of evidence and any other pre-hearing applications. On average the hearing of an appeal from a decision of the Commissioner in a patent opposition ought to occur within approximately 12 months of the Commissioner's decision. Judgment on the appeal will be reserved and would usually be delivered within three to six months after the appeal hearing.

A further appeal may be made to the Full Court of the Federal Court of Australia from a judge of the Federal Court in an appeal from a decision of the Commissioner but only with the leave of the Court. An applicant for leave to appeal must establish that the decision in question is attended with sufficient doubt to warrant the grant of leave and that substantial injustice would result from the refusal of leave to appeal. Where questions of pure law are concerned or where questions of public importance are at issue leave is more likely to be granted.

This article first appeared in Managing Intellectual Property, September 2016.