13 March 2016

Overcoming Examination Objections – Advocacy vs Evidence

HurdleAt a high level, the patent application process in Australia is not unduly complex.  First, an application is prepared and filed.  Then – either at filing, or at some later point in time – examination of the application is requested.  A patent examiner subsequently reviews the application, searches the prior art, and either approves the application for acceptance, or issues an examination report setting out any legal deficiencies or obstacles preventing this.  Once the application has been accepted, it is open for opposition by third parties for a period of three months.  The vast majority of accepted applications are not opposed, and so acceptance mostly leads directly to the grant of a patent.

Dealing with examination objections is therefore a critical part of the application process in many cases.  The primary decision to be made is whether to continue with the application, or to give up.  In my experience, some applicants are reluctant to take the second option, even when it would be wise to do so.  When the examiner’s objections have merit, and overcoming them would be unduly costly and/or could not be achieved without limiting the scope of the patent to something of little or no commercial value, the best thing to do might be to let the application die a natural death, and get on with doing something more productive with your time and money.  But this article is not going to be about how to abandon an application.

This article is about dealing with objections, in the many cases in which it is worthwhile to proceed with an application.  Sometimes – horrifying as it may seem – an examiner is simply wrong, in which case a reply to the examination report may consist of written submissions, such as reasoned explanation or argument, seeking to persuade the examiner of his or her error, such that the objections will be withdrawn.  Not uncommonly, there is some merit to the examiner’s objections, but the issues can be addressed by some form of permissible amendment to the application, usually accompanied by supporting written submissions.

What I intend to look at, in particular, is the nature of the written submissions made in response to an examination report.  How much weight do these have, what can be done to limit the examiner’s ability to ‘argue back’, and are there risks in testing the boundaries of ‘fair’ argument?

Advocacy Is Not Evidence!

An import point to bear in mind – by applicants, their patent attorneys, and examiners – is that, in Australia, the written submissions (usually prepared by the applicant’s attorneys) are pure advocacy.  They do not count as ‘evidence’ of anything, and they will not carry any weight in subsequent proceedings involving the patent, such as litigation over infringement and/or validity.

Last year, a single judge of the Federal Court noted that Australian courts ‘have eschewed recourse to extrinsic materials (such as correspondence between the patent applicant and the Commissioner) for the purpose of ascertaining the true scope of a claim’ (see Can What You Say In Patent Examination Be Held Against You in Court?).  That decision was appealed to a Full Bench of the Federal Court of Australia, which has now firmly confirmed this position under Australian law.

Specifically, in Lynx Engineering Consultants Pty Ltd v The Pilbara Infrastructure Pty Ltd [2016] FCAFC 19, a unanimous bench of the Full Court has said (at [81]):
Simply because the patent office file wrapper can be obtained by a freedom of information search does not make its contents relevant or admissible. The words of a patent are construed objectively by reference to the meaning which the normal person skilled in the art would attach to them. The patent file will generally provide only a partial insight into irrelevant subjective intentions, opinions, purposes, or actions of the patentee…

Just to emphasise: what the applicant says (typically via their attorneys) during examination of an application is irrelevant and subjective.  It is, in other words, nothing more than the self-interested submissions made by, or on behalf of, an applicant in its efforts to obtain a patent.  The published patent specification stands alone or, as the trial judge stated, ‘the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file’.  (The Full Court was wrong, however, to suggest that a ‘freedom of information search’ is required.  Most of the contents of the Patent Office file are publicly-available documents that can be obtained far more easily and quickly than this.)

Can Patentees Really Change Their Tune?

A situation in which the correspondence with the examiner may be said to be pertinent to infringement or validity typically arises where the applicant has sought, in the course of examination, to distinguish its own claimed invention from some prior art that has been cited.  In these circumstances, the applicant will typically seek to distinguish its invention by explaining the meaning of some terminology in its claims, or in the prior art disclosure, or both.  In the Lynx Engineering case, for example, the key phrase was ‘integrally formed within said side wall’, and its interpretation was critical to determining whether or not the accused products infringed the patent.

You might be thinking – particularly if you are accustomed the the US system, in which the courts will hold a patentee to what they said during examination – that surely a patentee cannot be permitted to argue one way in order to get a patent granted, and a different way in order to establish infringement?  In fact, however, there is not really much harm in this, if you think it through.

Firstly, during examination it is the examiner’s job to act as ‘gatekeeper’.  If the applicant’s argument is reasonable, and consistent with what is disclosed in the patent specification, then the appropriate action is to accept the application.  If the patentee later wishes to argue differently, that it its prerogative.  But it may come up against the problem that the later argument is no longer consistent with the specification and will, in all likelihood, fail.  If, on the other hand, the applicant’s argument is not consistent with the content of the patent specification, then the examiner should maintain the objection.

No System Is Perfect

Of course it is inevitable that, sometimes, errors will occur that result in patents being granted on the basis of an argument that is not consistent with the content of the specification.  There are two possible consequences of this.  Firstly, the patent might nonetheless be valid, when properly interpreted, in which case there is really no harm done.  Alternatively, the patent might be invalid on a proper interpretation, and the presence of a wrongly-granted patent on the Register is, of course, a concern.

There is, however, a clear benefit in accepting the reality that patents may sometimes be wrongly granted in this way.  The Register of Patents, and the associated patent specifications, are intended to perform a ‘public notice’ function.  If I want to find out whether something I am proposing to do may infringe an Australian patent I can (in principle at least) search the Register for relevant patents.  If I find something, then I can (again, at least in principle) assess whether or not I will infringe, and whether or not the patent is valid, without also having to trawl through a mass of additional extrinsic material such as the full contents of the Patent Office file.

Submitting Evidence During Examination

Advocacy is one thing, but what about actual evidence?  While not especially common in Australia, it is possible to submit expert evidence, such as a declaration or affidavit of an inventor, or other skilled person, in response to examination objections.  This is different from ‘mere’ argument.  When an expert in the field states, in a legally-binding form, that particular terminology is understood by a skilled person in a particular way, or that a particular innovation was contrary to accepted practice in the field (and therefore not obvious), there may be little that an examiner can do to effectively refute this, unless some contrary extrinsic evidence can be adduced.

I am not aware of any case having come before the Australian courts in which evidence, rather than argument, submitted during examination was raised as being pertinent to interpretation of a patent.  However, the message the courts have sent out to date is very much to the effect that the public should never have to refer to any aspect of the Patent Office file in order to determine the scope and validity of a granted patent.  It therefore seems likely that ‘evidence’ in the file would be treated with the same disdain as ‘advocacy’.  Yet the former is more likely to influence the examiner to withdraw objections and accept an application than the latter.  It does not seem right that simply having the same argument submitted by a different person, and in a different form, should result in a different outcome.

I think that the answer to this is section 138(3)(d) of the Patents Act 1990, which provides that a court may revoke a patent on the ground that it ‘was obtained by fraud, false suggestion or misrepresentation’.  I do not think that merely making an argument that turns out to be flawed will always rise to the level of ‘false suggestion or misrepresentation’.  However, submitting evidence attesting to ‘facts’ that are subsequently shown to be untrue will almost certainly trigger section 138(3)(d), if that submission materially contributed to the application being accepted.

I wrote recently about a case in which statements in the patent specification itself, which implied that experiments had been conducted when, in fact, they had not, were found to constitute invalidating misrepresentations.  A risk arises at any time an examiner relies upon a statement or submission being objectively ‘true’ in reaching a decision to accept an application.  If it is subsequently shown that the information in question was not known, or at least not believed, to be true by the person making the statement or submission, a court may find that the patent was obtained by false suggestion or misrepresentation.  The less scope there is for the examiner to challenge or refute the truth of the information, the more readily a court will infer that it was material to the decision to grant the patent.

Thus, while submitting evidence may provide a more effective path to acceptance, it is also more likely to enable a court to infer that the submissions led the examiner to accept the application.  For this reason, I regard submitting evidence during examination of an Australian application to be a last resort, requiring very careful consideration.


There are a few lessons in all of this, for applicants and examiners.

First, applicants and their attorneys should bear in mind (without becoming offended) that the courts will regard arguments submitted to the Patent Office as subjective, and irrelevant to the subsequent interpretation of the patent.  This is, in fact, fair enough.  Advocacy is not evidence (except, perhaps, of the skill of the advocate), and applicants are hardly disinterested parties in the patent examination process.  This is, in fact, a positive thing – it frees the applicant to argue strongly (within reason) for its position, without undue fear that the argument (even if unsuccessful) will subsequently be held against the patent.

Examiners, for their part, should be prepared to test and challenge arguments that appear to push the limits of credulity.  Other than in exceptional cases, the courts are unlikely to revisit the merits of submissions made during examination, and examiners are therefore the first and final line of defence against cunning advocacy!

Finally, evidence may have a place in examination – and I expect that this may be more true in some fields of technology than others.  Generally, however, I would approach its use with caution, because its greater effectiveness comes with additional risk.


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