Garford Pty Ltd v Dywidag-Systems International Pty Ltd [2014] FCA 1039 (18 September 2014)
As many readers will be aware, Australia’s patent laws include a pre-grant opposition system – once an application has been evaluated by an examiner, and approved for grant, an opportunity exists for third parties to step in and challenge that decision.
The purpose of such opposition proceedings (from a policy perspective, at least) is to reduce the probability of invalid patent claims being granted. Even if
prior art searching and examination were perfect, participants in the specific technology area to which an invention relates will always have access to additional information, not readily accessible to a patent examiner, that may be pertinent to the patentability of the invention.
The system thus recognises that the examination process is necessarily imperfect in practice, particularly given that examination resources are finite.
Furthermore, if either party to an opposition (i.e. the applicant or the opponent) is dissatisfied with a Patent Office decision in an opposition, there is an avenue for appeal to the Federal Court of Australia. Prior to commencement of the
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 on 15 April 2013, however, there was a problem with the available procedure for appealing a decision in a partially-successful opposition.
Specifically, the Federal Court on appeal was confined to considering the very same subject matter that had been reviewed by the Patent Office in the original opposition proceedings. Thus, if the opposition had been partially successful, in the sense that the opponent had established that at least some of the accepted claims were invalid, but the patent applicant was given the opportunity to propose amendments to address the successful grounds of opposition, the court could not take into account those proposed amendments.
This was unhelpful to both the patent applicant and the opponent. From the applicant’s point of view, it would be best that the proceedings before the court be based upon a set of claims that it considers to be defensible. From the opponent’s perspective, an appeal that may simply have the same outcome as the Patent Office decision, with the applicant still having an opportunity to amend, is potentially a complete waste of time and money.
A judge of the Federal Court has now confirmed that a ‘fix’ for this problem, implemented in the
Raising the Bar Act, has been effective.
This is just a quick post to let all of my regular readers know that I will be taking a short break from blogging. I have a lot going on at the moment, and have therefore decided to free myself from the imperative to write regularly in order to make time for other things.
