The Commissioner of Patents has used her power to re-examine a patent to narrow the scope of the patent claims. This was despite the Federal Court of Australia allowing the appeal by the patentee of the opposition decision not to allow the patent application and the patent having been granted.
Dura-Post (Aust) Pty Ltd (“Durapost”) was successful in opposing the grant of Delnorth Pty Ltd’s (“Delnorth”) patent application for a flexible roadside post made of spring steel. Delnorth appealed the decision to the Federal Court. An administrator was appointed for Durapost a few days before the directions hearing by the Federal Court. Delnorth, therefore, sought a number of final orders at the direction hearing including that the patent application proceed to grant. The administrator for Durapost did not oppose the orders sought by Delnorth and Durapost formally withdrew any objection to Delnorth’s patent. Foster J followed the practice of the Federal Court in such circumstances and made the orders sought by Delnorth that the patent application proceed to grant.
However, the day after the patent was granted, the Commissioner decided to re-examine the patent based on the prior art that was raised during the opposition hearing. A re-examination report was issued and Delnorth proposed amendments which, although allowable, did not overcome the issues raised in the re-examination report. Delnorth did not provide any further written submissions. The Delegate re-examined the patent in light of four prior art documents which had been raised by the examiner in the re-examination report and revoked the majority of the claims for lack of inventive step.
Interestingly, in reaching his decision, the Delegate referred to a number of sources including:
- the submissions that were made during the opposition;
- the decision of the Federal Court at first instance that two related divisional innovation patents were invalid for lack of an innovative step (for our alert on the decision click here). This decision was upheld on appeal to the Full Court of the Federal Court; and
- the expert evidence given during the Federal Court hearing on the two related divisional innovation patents.
Although the Delegate expressly commented that these earlier decisions of the Federal Court were clearly highly relevant to the present matter, he did not consider himself bound by these decisions.
This decision shows that, where there is compelling prior art, the Commissioner may re-examine a patent despite the fact that the Federal Court has made procedural orders that the patent application proceed to grant. This decision may indicate an increased willingness on the part of the Commissioner to re-examine patents of suspect validity.