If you’ve identified a patent application in Australia or New Zealand that you wish to oppose, there are a number of options to consider. Maybe you wish to remain anonymous (for commercial reasons) or have limited funds (as may be the case for SMEs). Or perhaps you want to oppose the application before acceptance and the start of the opposition period.
There are a number of options available, in both Australia and New Zealand, to attempt to prevent the granting of a patent application, other than initiating formal opposition proceedings before grant or Court proceedings after grant.
One of these options is the submission of third party observations, which are generally lodged before or during the examination phase of an application. This allows you to bring prior art documents and public acts to the attention of the Examiner that they may not have otherwise considered.
Below is a summary of the options available in Australia and New Zealand.
If you are seeking to challenge an Australian patent application at any time before grant, there are provisions in the Patents Act 1990 to file third party observations against validity under section 27.
Section 27 - Notice Affecting Validity
According to Regulation 2.5, a section 27 Notice can be filed at any time between the complete specification becoming open for public inspection (i.e. published), and three months after the advertisement of acceptance. This allows any person to file observations and prior art in respect of a pending application. It therefore provides the opportunity to draw to the Examiner’s attention documents that the Examiner may not have considered during examination, or that you consider the Examiner should definitely know about. This is particularly useful in the case of non-patent literature, as Examiners can occasionally miss prior art such as journal articles, or disclosures through public acts which are generally not considered during examination. All prior art submitted under a section 27 Notice must be accompanied by proof of the date of publication or disclosure.
If the observations in the Notice are convincing to the Examiner, an adverse Examiner’s Report may be issued. The Applicant then has the opportunity to respond, by amendment, argument or both.
A section 27 Notice, however, is limited to only those grounds prescribed by section 18(1)(b) of the Act, namely lack of novelty or inventive step. Therefore, this can be a particularly effective route to take if you have identified clearly novelty-destroying prior art. It should be noted that proceedings under section 27 are ex-parte and therefore the person filing the Notice does not become party to the proceedings once the Notice has been submitted. The Patent Office is under no obligation to keep you informed of the outcome of any matters arising from the Notice, although this can be followed online through the AusPat website. Further, the Australian Patent Office will not contact you for further information or provide you the opportunity to rebuke the Applicant’s arguments against your observations.
Timing of Filing a Section 27 Notice
When a section 27 Notice is filed at a time when the application has been published but not yet accepted (i.e. before or during examination), Regulation 3.18(4) states that “the Commissioner must consider the matter stated in the notice” when the specification is being examined. This assures that the observations and prior art supplied in the Notice will be at least considered by the Examiner as a part of the normal examination process.
If a section 27 Notice is filed during the three months after acceptance is advertised, the regulations do not provide precise steps that the Commissioner must take in regards to the supplied observations. However, section 97(1) of the Act does provide the ability for the Commissioner to order the re-examination of a complete specification at any time between acceptance and grant. While we assume that the Commissioner would order re-examination if he or she found the argument presented in the section 27 Notice compelling, this is not a legislated requirement.
The filing of a section 27 Notice does not preclude subsequent opposition or revocation proceedings. Therefore if a section 27 Notice is unsuccessful in having an application refused, it is still possible (within the normal 3 month period following advertisement of acceptance) to file a Notice of Opposition under section 49 of the Patents Act. The opposition may then rely on the matters raised in the section 27 Notice as well as any other matters within the scope of section 59.
As we have mentioned in previous news alerts, New Zealand recently underwent a significant shift regarding intellectual property laws with the enacting of the Patents Act 2013 (“the 2013 Act”) in September 2014. The 2013 Act allows for the submission of third party observations similar in scope to those discussed above for Australia.
Section 90 – Assertions by Third Parties
Similar to section 27 in Australia, section 90 of the 2013 Act allows for any person to supply the Patent Office with observations and supporting documents against an application on the grounds of lack of novelty or inventive step only. Further, section 90 observations do not preclude subsequent opposition, re-examination or revocation proceedings if unsuccessful. However, this section differs in New Zealand from the corresponding Australian provision, as such observations can only be filed between publication and acceptance (i.e. before or during the active examination phase). Once accepted, observations under section 90 can no longer be filed.
In this regard, if you elect to file third party observations in New Zealand, you can be assured that they will be considered by the Examiner during Examination.
A further difference in New Zealand includes the provision that the Commissioner may seek further submissions and information from the person making the assertion. This is not the case in Australia. This may allow you to partially rebut the Applicant’s arguments, or to provide further prior art and observations to support your grounds. It is unclear at this stage, due to the newness of the 2013 Act, whether this provision will be widely used.
1953 Act vs 2013 Act
Due to the transitional arrangements in New Zealand, observations under section 90 of the 2013 Act can only be filed against applications proceeding under this Act (i.e. those with a complete application filing date including PCT national phase entry lodgement after 13 September 2014). As applications (and their divisionals) filed before this date are still prosecuted under the 1953 Act, third party observations cannot be made to the Patent Office for such applications. However over time, as the proportion of applications before the New Zealand Patent Office increasingly shifts towards the 2013 Act, there will be greater opportunities available to influence the Examination process by means of section 90 observations.
Section 27 Notices (Australia) and section 90 observations (New Zealand) are options available for relatively low cost challenge to patent applications before granting or acceptance. Whilst only novelty and inventive step grounds are available in these proceedings, they can be an effective route to take if clearly novelty-destroying prior art is identified. Further, anonymity can be maintained and potential future opposition proceedings and re-examinations are not jeopardised by filing third party observations.