The Australian Patent Office recently issued two decisions on the examination and certification of innovation patents owned by UK company Diogenes Limited: Diogenes Limited [2023] APO 5 concerning innovation patent no. 2020104437 (‘Diogenes 1’); and Diogenes Limited [2023] APO 8 concerning innovation patent no. 2021103809 (‘Diogenes 2’). Both patents claim inventions relating to electronic pool wagering systems and – unsurprisingly, given this subject matter – both were found to be unpatentable under Australia’s ‘manner of manufacture’ approach to patent-eligibility. However, it is not the substantive reasons for refusing to certify the patents that is of most interest. What is unusual about both patents is that they had each expired before an initial examination report had even been issued. Despite this, IP Australia proceeded with examination, issuing three reports on patent no. 2020104437, and two reports on patent no. 2021103809, before in both cases accepting requests to be heard and issuing the decisions noted above. Just to repeat for emphasis, all of this activity occurred after the patents had expired.
The rationale for proceeding with examination is given in Diogenes 1 at paragraph [10], where the Hearing Officer observed:
It is not usual for the Commissioner to undertake actions on an expired patent. However, I note that, in order for the patentee to enforce their rights in relation to an innovation patent, it is necessary for that patent to be examined and certified. In such circumstances, and noting that the patentee could potentially bring infringement proceedings up to 6 years after expiry (assuming infringement proceedings occurred just prior to the expiry date – see subsection 120(4) of the Act), undertaking examination (and this decision) after the expiry date is appropriate.
I find this statement confusing, and suspect that the Hearing Officer may have meant to suggest that the infringement itself – rather than the ‘infringement proceedings’ – may have occurred prior to the expiry date of the patent. In any event, we will get to the circumstances in which an expired innovation patent, that was not examined and certified within its lifetime, may nonetheless be enforceable.
Diogenes 2 was decided by a different Hearing Officer, who (at paragraph [4]) adopted the reasoning of Diogenes 1 for proceeding with examination of an expired innovation patent.
In the Diogenes cases, examination of the innovation patents was requested while they were both still alive – albeit, as we shall see, just barely! But these decisions raise the question of whether a (former) patentee could request examination of an expired innovation patent and, in such a case, whether the expired patent could be retrospectively certified and enforced up to six years after expiry. If so, then this might apply not only to patents that expired at the end of their maximum eight year term, but also to patents that ceased earlier than this due to non-payment of an annual renewal fee.
The upshot is that zombie innovation patents are able to rise from the dead and reach back in time to capture historical infringements!
