Australia has a pre-grant patent opposition system, meaning that an opportunity is provided after a patent application has been approved by an examiner, but before a patent is actually granted, for third parties to raise objections. The usual policy justification for pre-grant oppositions is that they allow grounds of invalidity that may have been unavailable to the examiner to be raised by parties who may have greater familiarity with, and access to, knowledge and prior art information relating to the claimed invention. Most often, an opponent is a competitor of the patent applicant, and thus has a particularly strong incentive to ensure that an invalid patent that may hinder its own activity is not issued. Accordingly, the public benefits from this additional level of scrutiny which can reduce the incidence of invalid patents being granted.The disadvantage of pre-grant opposition proceedings is that they extend the period during which a patent application remains pending – sometimes by many years. In the event that (as is overwhelmingly the case) a patent is ultimately granted, the patentee may have been deprived of a significant portion of the time during which it might have been able to immediately enforce its rights. The wider public is also disadvantaged by lengthy delays, during which time the ultimate scope of any patent granted – or, indeed, whether or not a patent will be granted at all – remains uncertain.
Prior to the Raising the Bar (‘RTB’) reforms to the Australian patent laws and regulations, which came into effect on 15 April 2013, the largest contribution to opposition delays was the time taken by opponents and patent applicants to prepare evidence supporting their respective positions. Although the rules nominally allocated three months to each of the three usual evidentiary periods, applications for extensions of time, and for opportunities to file additional evidence had become, in practice, almost impossible for the Patent Office to refuse. However, the RTB reforms included significant amendments to the Patents Regulations 1991 that have substantially limited the ability of each party in a patent opposition to obtain an extension of time to prepare evidence. With four years now having passed since the amendments commenced operation, it is timely to take a closer look at their impact on opposition delays.
Using data available in the 2017 edition of IP Australia’s IP Government Open Data (IPGOD) set, I have analysed 211 patent oppositions that have commenced since 2004, and which proceeded through to a Patent Office hearing and final decision. Of these, 102 were conduced entirely under the pre-RTB regime, while 57 were conducted wholly according to post-RTB extension-of-time regulations. The remaining 52 oppositions were ‘transitional’, in the sense that they commenced pre-RTB, but included at least one evidentiary period governed by the post-RTB rules relating to extensions of time.
The main findings from my analysis are that:
- the RTB reforms have cut the average total duration of an Australian patent opposition by nearly 50%, from just over four years (1512 days) to just over two years (773 days);
- variability in opposition duration has dropped even more dramatically, by more than a factor of three, but the standard deviation remains high at over 200 days;
- the average total time required for parties to prepare and file evidence has been slashed from 803 days to just 250 days;
- however, the period between finalisation of evidence and a decision following a hearing remains lengthy, averaging 332 days, and also highly variable, with a standard deviation of 130 days;
- furthermore, where an application is not refused as a result of opposition (i.e. the overwhelming majority of cases), the period between the decision and grant of the patent is hugely variable, having a standard deviation of 162 days, in relation to an average of just 121 days.
It is therefore clear that while the RTB reforms to the requirements for obtaining an extension of time to prepare evidence have been highly effective, many patent oppositions are still taking months longer to resolve than should be required. What has changed, however, is that opponents and applicants are no longer the primary source of delays. The next frontier for further improvement in the speed of resolution of patent oppositions lies within the Patent Office.
Opposition Procedure
The Australian pre-grant opposition procedure is illustrated in the diagram below. The process begins with the filing of a Notice of Opposition (NOO), within three months of the day on which acceptance of the application is advertised. The opponent must then file a Statement of Grounds and Particulars of opposition (SOG) within a further three months. This initiates a series of three evidentiary periods: the opponent’s Evidence in Support of the opposition (EIS); the patent applicant’s Evidence in Answer (EIA) to the EIS; and finally the opponent’s Evidence in Reply (EIR) to the EIA. The opposition may then proceed to a Hearing in the Patent Office, following which (usually within three months) a written decision is issued.
If the opposition is wholly successful, and the claims in the application are irremediably invalid, then the application is refused as a result of the decision. More commonly, however, an opposition is either unsuccessful or only partially successful, such that the grounds of opposition upheld by the Hearing Officer may be overcome by amendment. In these cases, a patent will usually be granted following the allowance of any required amendments.
For the purposes of my analysis, I take the overall duration of an opposition to be the time between filing of the NOO and either the date of the decision, in the case of refusal, or the date of grant of the patent otherwise. I have also chosen to identify three distinct phases of an opposition: the ‘evidence period’ between filing of the SOG and finalisation of EIR, the ‘hearing period’ between finalisation of EIR and the date of decision; and the ‘post-decision period’ between the decision and the date of grant.
Data and Transitional Provisions
I include in my analysis all complete oppositions for which there are records in the 2017 IPGOD data set. By a ‘complete opposition’ I mean one that proceeds to a hearing and final decision, and results in either refusal or grant of a patent. Oppositions in which either the opponent or applicant withdraws (e.g. because there is a settlement) at any stage are excluded from this definition. The vast majority of complete oppositions include all three phases of evidence, although there are examples of cases in which one or both of EIR and EIA were not filed. I have therefore considered these to be ‘optional’ for my purposes here. The total number of oppositions in this data set, and the outcomes, are summarised in the following table.
Total Oppositions
|
Patents Granted
|
Applications Refused
|
|---|---|---|
211
|
198
|
13
|
As I have already noted, it is overwhelming the case that a patent is granted despite opposition, although in many cases the granted patent will have reduced scope as a result of amendments required in order to overcome specific grounds of opposition.
Oppositions over the period covered by the IPGOD data can also be categorised by the extent to which they were conducted under the pre-RTB and/or post-RTB regulations. According to the RTB transitional provisions, the revised rules governing extensions of time applied to any evidence phase commencing on or after 15 April 2013, for both new and ongoing oppositions. In the following analysis, an opposition is regarded as pre-RTB if all evidence phases are covered by the former rules, i.e. if the commencement of the EIA stage is prior to 15 April 2013. An opposition is post-RTB if its evidence period is entirely covered by the revised rules, i.e. if the SOG is filed on or after 15 April 2013. An opposition is transitional if at least the EIS phase is covered by the old rules, but one or both of the subsequent phases (i.e. EIR and/or EIA) takes place under the new rules.
Overall Opposition Duration
The chart below shows the overall duration of completed opposition proceedings by date of commencement (i.e. the date of filing of the NOO). It also shows the individual contributions of the evidence period and the hearing period in each case.
It is immediately apparent from the chart that both the average and the variability of the duration of patent opposition proceedings have declined dramatically as a result of the RTB reforms. The table below summarises the number of oppositions (N), their average duration, and the standard deviation in the duration, for pre-RTB, transitional, and post-RTB opposition proceedings. Oppositions conducted entirely under the current, post-RTB, extension rules have an average duration just 51% of that of pre-RTB oppositions. Variability has reduced even more dramatically, with the post-RTB standard deviation being just 31% of the pre-RTB value.
Category
|
N
|
Average Duration (days)
|
Std Dev (days)
|
|---|---|---|---|
Pre-RTB
|
102
|
1512
|
679
|
Transitional
|
52
|
1503
|
391
|
Post-RTB
|
57
|
773
|
208
|
The chart also reveals that while average duration and variability have declined in all stages of patent opposition as a result of the RTB reforms, the effects have been less dramatic for the hearing period than for the evidence period. This is unsurprising, considering that the main changes to the regulations were with regard to limiting the availability of extensions of time to prepare evidence. However, it is notable that the hearing period is now longer than the evidence period in many cases – a subject to which I will return below.
Evidence Periods
The chart below shows the total duration of each individual evidence stage (i.e. all EIS, EIA and EIR phases) as a function of their respective start dates, across all complete oppositions. Compared to the overall opposition duration, the evidence period shows a more marked decline in average duration and variability after April 2013. This is to be expected because, as noted above, the RTB reforms to the opposition rules most directly affected the grant of extensions of time to prepare evidence, and would not necessarily have the same impact on other stages of the opposition process. Additionally, transitional oppositions tend to include longer, pre-RTB, evidence stages in combination with shorter, post-RTB, stages, thus spreading the effects of the reforms more broadly across the period covered by the available data.
It can also be seen from the chart that there is a very strong tendency for recent evidence stages to be around either 90 days or 60 days in duration. This is readily explained – one of the RTB reforms was to reduce the nominal period for filing EIR from three months to two months, while the nominal period for filing EIS and EIA remained at three months.
The distinctions between EIS, EIA, and EIR are illustrated by the following chart, in which they are shown using separate traces. While it is clear from this that the average duration of the EIR stage has always been lower that EIS and EIA stages, the large variations make it less obvious which of the two earlier stages tends to be longer.
In fact, the pre-RTB average durations for EIS and EIA are 358 days and 410 days, respectively. For post-RTB oppositions the corresponding averages are 102 days and 124 days. However, in both cases the EIA averages are significantly influenced by a relatively small number of exceptionally protracted cases. The most common cause of these is amendment, i.e. once a patent applicant has had an opportunity to review the opponent’s evidence there is some likelihood that they may elect to amend the application in order to address, at an early stage of proceedings, any grounds of opposition that seem certain to be successful. Since an application to amend a patent specification is itself subject to opposition, the main proceedings can be suspended for an extended period while the allowability of the amendments is decided. However, the RTB reforms also enhanced the efficiency of procedural oppositions of this kind, and thus the protracted EIA periods in the post-RTB era are themselves less pronounced than before commencement of the RTB reforms.
The average total durations, and corresponding standard deviations, of the evidence period for pre-RTB, transitional, and post-RTB cases are summarised in the following table.
Category
|
N
|
Average Duration (days)
|
Std Dev (days)
|
|---|---|---|---|
Pre-RTB
|
102
|
803
|
470
|
Transitional
|
52
|
767
|
312
|
Post-RTB
|
57
|
250
|
114
|
The effectiveness of the RTB reforms in reining-in extensions of time is most powerfully illustrated by the average duration of the post-RTB evidence period, which is just 250 days, down from 803 days in the pre-RTB era. This can be compared with the nominal total period allowed for evidence, post-RTB, which is eight months (three for each of EIS and EIA, and two for EIR), or around 243 days.
The stunning impact of the RTB reforms on opposition evidence stages is graphically illustrated by the two histograms below, for pre-RTB and post-RTB cases respectively. Each divides duration into 30 day intervals of 11-40 days, 41-70 days, 71-100 days, and so forth, and the bars show the frequency with which the duration of EIS, EIA, and EIR stages falls into each interval. Whereas pre-RTB durations are spread across hundreds of days, post-RTB durations overwhelmingly fall into the intervals including the nominal three- and two-month periods allotted in the Patents Regulations, with extended periods being relatively rare.
Hearing Period
The following table summarises hearing period statistics for pre-RTB, transitional, and post-RTB oppositions. There has been a far less significant reduction in this phase of opposition proceedings and, in fact, for post-RTB cases the average hearing period of 332 days now exceeds the average evidence period of 250 days.
Category
|
N
|
Average Duration (days)
|
Std Dev (days)
|
|---|---|---|---|
Pre-RTB
|
102
|
466
|
265
|
Transitional
|
52
|
436
|
201
|
Post-RTB
|
57
|
332
|
114
|
Delays during the hearing period are not necessarily within the control of the Patent Office. In the most extreme post-RTB example, application no. 2011229160, Federal Court proceedings interrupted an opposition between the close of evidence and setting the matter down for hearing. And in a small number of cases extended delays may arise as a result of a patent applicant’s decision to request amendment of the application once all of the evidence has been finalised, and prior to the hearing. However, from my review of a few applications it appears that these delays could often be significantly reduced if the Patent Office were to impose greater discipline upon itself and the opposition parties.
For example, in the case of application no. 2009200745 the evidence period concluded on 30 June 2014, with the opponent electing not to file EIR. Letters requesting availability for hearing dates were then not sent out to the applicant and opponent until five months later, on 28 November 2014. A hearing was eventually held after a further six months, on 2 June 2015, and a decision finally issued on 19 August 2015. There are many similar examples of delays comfortably exceeding a year due to periods of inaction in the Patent Office and/or undue indulgence of apparent resistance to earlier agreement on a hearing date by either the opponent or applicant.
Having placed opponents and applicants under (in my opinion, sometimes unreasonable) pressure to minimise evidentiary delays, in the name of improving efficiency and resolving oppositions faster, my view is that the Patent Office needs to be doing better than this. The public interest is not served by delays in the Patent Office, nor by permitting the parties to delay a hearing to suit their own convenience.
Post-Decision Period
Statistics for pre-RTB, transitional, and post-RTB post-decision period durations are summarised in the table below. It is during this period that applicants are most likely to seek to amend following a partially successful opposition. It is therefore pleasing to see that both the average duration of this period, and its variability, have improved significantly, presumably as a result of the RTB reforms enabling oppositions to amendments also to be resolved more rapidly.
Category
|
N
|
Average Duration (days)
|
Std Dev (days)
|
|---|---|---|---|
Pre-RTB
|
102
|
303
|
301
|
Transitional
|
52
|
237
|
224
|
Post-RTB
|
57
|
121
|
162
|
In the post-RTB era, the average duration of the post-decision period is significantly raised by a small number of particularly protracted delays. For example, in the case of application no. 2008251647 a decision in the main opposition was issued on 20 October 2014, following which the applicant filed a request to amend the application in 19 December 2014. The opponent was afforded an opportunity to comment on the amendment, an examination report was issued, a further amendment request was filed, and the proposed amendment was advertised for opposition purposes on 14 May 2015. The opponent opposed allowance of the amendment, leading to further rounds of evidence, a hearing and a final determination. A patent was ultimately granted on 16 February 2017, following a post-decision period of 850 days.
Another potential cause of lengthy post-decision delays is the availability of an appeal to the Federal Court of Australia. In the case of application no. 2010252935 the opponent was wholly unsuccessful on all grounds, and in a decision dated 15 December 2015 the Hearing Officer directed that – subject to appeal – the application should proceed to grant. The opponent filed a Notice of Appeal with the Federal Court on 27 January 2016, however some settlement was presumably reached because the appeal was discontinued on 23 November 2016. During this time, the application remained pending, and was ultimately granted on 27 January 2017, following a post-decision period of 409 days.
However, in the absence of delays due to amendments or appeals, the post-decision period is more typically between 30 and 60 days.
Conclusion – Time for the Patent Office to Step-Up?
The RTB reforms to regulations governing extensions of time in patent oppositions have unquestionably succeeded in reducing delays in the preparation and filing of evidence. Indeed, with a ‘target’ of around 243 days in total, and a post-RTB average of 250 days, it is difficult to imagine any further reductions being achieved in this element of opposition proceedings.It is worth reiterating that this success comes at a price, however it is not one that is paid by the Patent Office, but by the attorneys whose responsibility it is to manage their own workloads along with the contributions required from clients and expert witnesses in the course of an opposition. My comments on this issue when I explained the many reasons why I quit my job as a full-time patent attorney remain pertinent:
One of the major Raising the Bar law reforms back in 2013 was designed to force oppositions to run more efficiently by making it more difficult to obtain extensions of time to prepare and file evidence. As a result we went from a system in which it was almost impossible for the Patent Office to deny an extension to one in which extensions are granted only in circumstances of ‘genuine’ need. As a patent attorney managing an opposition it is now necessary to keep everything on-track continuously, or risk losing the case for your client. It does not matter what else is happening in your life, how much work you have on your plate, or how many other deadlines you may have to meet, none of these is an excuse for not getting your opposition evidence in on time. All that matters is your diligence in progressing the evidence for that one opposition.
In this context, many attorneys would be entitled to feel at least a little disgruntled to learn that the Patent Office is routinely allowing periods in excess of 250 days to elapse between completion of evidence in an opposition, and issuing a final decision, due to a combination of inaction and apparent indulgence of the parties. Of course, this may be a result of availability and/or workloads of Hearing Officers, in which case I would suggest that the Office needs to look at its resourcing in this area. After all, IP Australia expects no less of attorney firms managing opposition proceedings on behalf of their clients!
To be clear, reforms to the rules governing evidence in patent oppositions were absolutely necessary. In the data set that I have analysed here, 26% of pre-RTB oppositions had evidence periods exceeding three years, which was a totally unacceptable and unsustainable situation. But as matters now stand, opponents, applicants, and their representatives, are doing almost all of the heavy-lifting in the reduction in opposition duration that has been achieved. For there to be any further substantial gains, I would suggest that the Patent Office now needs to step-up.
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