If a correctable deficiency is identified at any time, it is important to bear in mind that it may be too late to take appropriate corrective action once a potential infringement of the patent is identified.
POST-GRANT AMENDMENT OF AUSTRALIAN PATENTS
In our recent post, A Tale of Four Amendment Requests, we wrote about the provisions for amendments of Australian patents, and discussed four recent decisions exemplifying the various benefits and pitfalls of different approaches. To recap briefly, an amendment may be made to a granted patent for any reason, provided that it does not:
- broaden the scope of the patent;
- add and claim new subject matter; or
- introduce certain other defects into the description or claims.
The Patent Office procedure is relatively low cost and, if the amendment is allowable, the Commissioner of Patents has no discretion and must allow the request. However, an amendment allowed by the Commissioner is open to opposition by third parties.
The alternative court procedure must be followed if relevant proceedings, such as infringement or invalidity actions, have already commenced. However, the court has discretion to refuse an amendment that is otherwise allowable. Exercise of this discretion is guided by equitable considerations, primarily relating to the conduct of the patentee.
Recent cases demonstrate that it will generally be preferable to request amendment before the Patent Office at the earliest opportunity and before any dispute arises with another party. Our experience is that amendments are rarely opposed unless the opposing party has some existing apprehension of an infringement action and is therefore monitoring the patent.
If an approved amendment request is opposed by an infringer, the patentee can seize back the initiative by filing suit, thereby removing the matter from the Patent Office. An application may then be filed with the court for an order to make the same amendment already approved by the Patent Office.
In any circumstances in which it becomes necessary or desirable to apply to the court for amendment, it is essential that the patentee provides a full and frank disclosure of all relevant circumstances, even if this involves a waiver of privilege in advice regarding the need for amendment.
Finally, the court may exercise its discretion to refuse an amendment application if there has been unreasonable delay. For example, if you have known for years that your patent claims are invalid, but have nonetheless enjoyed the benefits of allowing the unamended patent to remain on the register, it is entirely possible that the court will refuse a request to amend after commencing infringement proceedings.
(A version of this article was originally published on 25 August 2010 in the International Reports section on the IAM Magazine website.)