In the decision of Huping Hu (2014) APO 17, the Australian Patent Office has re examined a granted patent via the new re examination provisions introduced in April 2013 by the IP Laws Amendment (Raising the Bar) Act 2012.

In this case the applicant, Huping Hu, requested examination in June 2009 and after filing submissions and amendments achieved acceptance of the patent application in May 2012. The patent was granted in September 2012 (Australian Patent 2007220893 – Method and apparatus for producing quantum entanglement and non-local effects of substance description).

In May 2013, for reasons unknown, the Australian Patent Office elected to re-examine the patent.

Interestingly, the re-examination report contained new objections relating to utility of invention, lack of manner of manufacture, and that the specification did not fully describe the invention.

A boost for patent re-examination

Prior to 15 April 2013, the only grounds available to the Commissioner of Patents (or a third party) during re-examination were novelty and inventive step. Any issues of lack of manufacture, utility or sufficiency should only be raised during revocation proceedings before the Federal Court. However, following 15 April 2013, the expanded grounds now available for re-examination include:

  • novelty (including prior use)
  • inventive step and manner of manufacture
  • utility, and
  • the requirement to fully describe the invention irrespective of when examination was requested.

The only catch is that while the Raising the Bar Act expands the grounds available for re-examination, the application of each ground depends on when the examination request was filed (i.e. prior to or after 15 April 2013). For example, in a case where an examination request was filed before 15 April 2013, the expanded re-examination grounds apply, but in the case of S40, the pre-Raising the Bar test (fair basis) applies, rather than the new post- Raising the Bar test (support).

In Huping Hu’s case, it was found by the Delegate that the patent lacked utility, lacked patentable subject matter (i.e. was not a manner of manufacture), and the specification did not fully describe the invention. The delegate also considered that the grounds of objection to the specification could not be rectified by an allowable amendment and therefore revoked the patent.

Manner of manufacture

What may be of interest to readers is the possibility of requesting re-examination and raising the issue of manner of manufacture. In this regard, it is anticipated that two significant judgments in the areas of patentability of computer implemented inventions and gene patents will be handed down in the coming months. Depending on the judgment in these cases, in may be easier to succeed in having a patent revoked on this ground and for relatively minimal expense.

In addition, the Commissioner of Patents could conceivably ‘purge’ the Australian Patent Office register of patents which no longer comply with any strengthened manner of manufacture requirement by issuing re-examination requests to the patentees.

Utility

In addition to manner of manufacture, the availability of the ground of inutility during re-examination may also have a significant impact on the outcome of the re-examination process.

For example, the Explanatory Memorandum accompanying the Raising the Bar Act, discusses the example of clinical trials of a new drug that show that a drug does not achieve the use disclosed in the specification and the drug is therefore not useful. It is possible that the recent trend towards publication of negative clinical trial results for pharmaceuticals may impact upon the validity of granted patents.

Standard of proof

Importantly, a higher standard of proof now applies during re examination. The higher standard of proof also applies for cases where examination was requested before the Raising the Bar Act commenced. The intention is to give the Commissioner the ability to refuse to grant or to revoke a patent where the Commissioner is satisfied, on the balance of probabilities, that a granted patent would be or is invalid. Previously,  the Commissioner could only refuse to grant or to revoke a patent if she was practically certain any granted patent was invalid.

Finally

It is clear that the previously weak re-examination provisions have been given a real boost by the Raising the Bar Act. Only time will tell to what extent the Commissioner of Patents will use the new provisions. For third parties, re-examination now presents a useful and relatively inexpensive tool to launch an invalidity attack on an Australian Patent.