Australia’s pre‑grant opposition proceedings are playing a more significant role in the strategies of patentees and challengers.
However, facing a patent opposition in Australia is a new experience for many patent owners. So, what should a patent owner do when faced with an opposition in Australia?
Time is on your side, but don’t sit around
As a patent applicant, time is on your side at the start of the patent opposition procedure. Work on the overall defence plan should commence promptly. Early decisions can be crucial to success, and early mistakes could end up being fatal. Accordingly, long-term planning ought to be done sooner rather than later. In the past, patent opposition proceedings in Australia often became protracted due to generous provisions relating to extensions of time for lodging evidence. This is no longer the case.
Evidentiary time periods are still extendable, but the regulations relating to extensions of time for evidentiary periods are now reasonably onerous and strictly applied by IP Australia. Unless a party can show that they acted promptly and diligently and made all reasonable efforts to file the evidence in time, an extension will not be granted. In situations where, for example, a party wishes to provide experimental evidence to support their case, such studies may need to be set up early on in the proceedings.
What does an Australian patent opposition involve?
Patent oppositions are conducted before the Australian Patent Office (IP Australia). Any person can oppose the grant of a patent on a patent application by filing a notice of opposition (a simple one-page form) within three months of publication of acceptance of the patent application. Straw man oppositions, where the opposition is filed in the name of a third party (usually a patent attorney firm), are also possible.
After filing the notice of opposition, the opponent has three months to file a statement setting out the grounds and particulars of the opposition, together with a copy of any documents referred to in the statement. The grounds for opposition include:
- the invention is not a patentable invention (including not patentable subject matter, lack of novelty or inventive step, in-utility, prior secret use); and/or
- the specification does not comply with the written description requirements section 40(2) or 40(3) of the Patents Act 1990 (Cth).
Both parties are given the opportunity to file evidence. The evidence in patent oppositions is filed in the form of declarations. In a typical opposition the evidence will include declarations by one or more experts.
Once all the evidence has been filed, the opposition is then set down for a hearing. Submissions may be made at the hearing in person, by video-conference or in writing. The hearing officer usually takes about three to six months to issue a written decision. The decision in an opposition can also be appealed as of right to the Federal Court of Australia.
Develop a strategy early
Initially patent owners should conduct a cost-benefit analysis, e.g. evaluating the value of the patent versus the cost of fighting the opposition, in view of the likelihood of success. In doing so, it is important to bear in mind that the fact an opposition has been filed strongly indicates that it is at least commercially important to the opponent to try and ‘clear the path’.
If defence is warranted, it is critical to identify potential experts that might assist with providing evidence at an early stage. Obviously, any expert must have the relevant expertise, but they also need to be available to assist, both logistically and in terms of potential conflicts. In highly specialised technical areas the number of potential experts can be small, and it can be a race to secure the best options.
Whilst the case against the patent application cannot be fully understood until the evidentiary rounds are complete, we recommend conducting an analysis of the opposition at an early stage once the Opponent’s Statement of Grounds and Particulars is received, and then updating that analysis on receipt of the evidence. This early review includes understanding the commercial position, considering the patent specification and prior art, and reviewing prosecution history in Australia and other major countries. The analysis can assist with identifying suitable experts, understanding which topics are important to address in the evidence, and highlighting possible amendments that may strengthen the patent application.
Patent applications under opposition can be amended as of right at any time, even after a written decision has issued. The procedure takes time, however, as the amendments need to be advertised for two months and can delay the proceedings. If amendments might be required or desirable, it is important to consider the best timing for making those amendments.
Consider your options for new representation
Opposition practice is a specialised area of Australian patent law, particularly with regard to areas such as preparation of expert evidence, hearing preparation, dealing with procedural aspects and extending into commercial aspects such as settlement negotiations and licensing.
Not all Australian patent attorneys handle patent oppositions regularly and even some that do simply default to a ‘wait and see’ approach when acting for patent applicants. Sometimes that is the right approach, but not always. If your Australian patent attorneys are not proactively engaging with you on these issues, then it is worth considering whether they are the right team for your matter.
How we can help
Griffith Hack’s experts have extensive experience in handling Australian patent oppositions. Our combined patent attorney and legal team provides integrated scientific and legal expertise, together with strategic, commercially-relevant insight, and has a proven track record in delivering results.