Have Australia’s ‘Raising the Bar’ Law Reforms Suppressed Patent Oppositions?

Australia has a pre-grant patent opposition system.  That is to say, once an application has passed examination and been accepted for potential grant as a patent, there is a period (of three months) during which anybody may oppose the grant.  The subsequent opposition proceedings – if they run their full course – consist of a series of evidentiary stages, legal submissions, and an oral hearing, following which the hearing officer (a delegate of the Commissioner of Patents) issues a written decision on the outcome of the opposition.  In the final reckoning, the patent application may emerge unscathed, it may be refused, or it may end up being granted subject to narrowing amendments. 

The patent opposition system recognises that the examination process is imperfect.  Examiners have limited time, resources and technical expertise.  Therefore, they may not always find the closest and most relevant prior art, or spot every technical and legal issue that might be identified by a motivated competitor to the patent applicant, equipped with a team of technical and legal experts.  Furthermore, opposed applications are presumably those that are of greatest concern to competitors, enabling the system to weed out invalid claims that have the greatest potential to unfairly stifle competition.

In the years prior to 2016, the number of oppositions filed each year was fairly consistently between 100 and 120.  In recent years, however, it has commonly been between 40 and 60.  In other words, there are now only about half the number of patent oppositions being filed than was the case just a decade ago.  So, if oppositions play an important role in the Australian patent system – and the policy rationale for having them asserts that they do – is it possible that they are now less effective than they once were?  And, if so, then why?

In this article, I will present data on all patent oppositions filed between 2008 and 2023.  I will demonstrate that the decline in patent oppositions appears to be associated with the commencement of the Raising the Bar (‘RtB’) IP law reforms in 2013.  Among other things, the RtB reforms introduced more stringent standards of patentability, particularly in relation to inventive step and the level of disclosure required to support broader patent claims.  The reforms also changed the standard of proof to be applied during examination and opposition proceedings.  I will show that in the post-RtB era, opposition proceedings have more frequently progressed through to a final decision, and that opponents have had somewhat greater success in completely eliminating opposed applications.  However, the overwhelming majority of opposed applications still result in granted patent rights, and in nearly half of all cases the opponent has been wholly unsuccessful and the patent has been granted with the originally accepted claims.

While the data cannot directly reveal the reasons for the significant reduction in opposition filings, I tentatively argue that the change in the standard of proof applied in patent oppositions may have had the unintended consequence of suppressing patent oppositions, and reducing the effectiveness of the opposition system.

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Tags: Australia, IP RAPID, IPGOD, Law reform, Opposition, Raising the Bar

IP Australia Proposes Minor Fee Changes, Major Changes to Opposition and Other Hearing Costs Awards

Just prior to Christmas, IP Australia announced that it is seeking feedback on its draft Cost Recovery Implementation Statement (CRIS), which outlines proposed fee changes that would take effect from October 2020.  It is also taking the opportunity to review the hearing costs that may be awarded for Patents, Trade Marks and Designs.  The public consultation process closes this Sunday, 16 February 2020.  In this article I will look briefly at proposed fee changes in relation to patents, none of which strike me as unreasonable or contentious.  I am, however, more concerned about proposed increases in the costs that may be awarded in relation to contested hearings, and most particularly patent oppositions.

IP Australia conducts its regulatory role in administering Australia’s system of registered rights (patents, trade marks, designs, and plant breeder’s rights) on a cost recovery basis, i.e. it seeks to cover the costs of these aspects of its activities from the fees charged to users of the system (which these days, for better or worse, it calls ‘customers’).  To do this, it uses various financial and economic systems and models to forecast expected demand and cost of service delivery, and reviews and adjusts fees on this basis every few years.  IP Australia last undertook a fee review in the 2015-16 financial year.

Cost recovery does not require each individual fee to reflect the cost of the nominally associated service.  The fee for requesting examination of a standard patent, for example, is (and will remain, under the proposed fee structure) A$490, which doubtless falls far short of the actual cost of examining an application.  Patent maintenance fees, on the other hand, correspond with minimal and highly automated administrative tasks, and currently rise as high as A$2550 annually, for pharmaceutical patents extended beyond the standard 20 year term.  This reflects the fact that fee setting can serve broader policy purposes, such as providing an incentive for patentees not to maintain patents that no longer hold corresponding commercial value, thus freeing up the patented technology for public use.

Costs in contested hearings, on the other hand, have nothing to do with the operations of IP Australia.  They are amounts, set by regulation, that can be awarded by designated officers of IP Australia against unsuccessful parties in administrative proceedings such as patent oppositions.  They are paid directly by the ‘loser’ to the ‘winner’, and are intended to offset the actual costs of the proceedings incurred by the successful party.  IP Australia is proposing to increase the costs that may be awarded significantly (by more than four times in some cases), on the basis that this will ‘better reflect the actual costs incurred’, and that the proposed costs ‘are based on the practice of the Federal Court’.  Both of these justifications may be true, though that does not automatically make them relevant!

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Tags: Australia, Costs, Fees, Maintenance fees, Opposition, Patent Office, Public consultation

Data on Patent Office Decisions Highlights Impact of Law Reforms, and Continuing Problems with Law on Patent-Eligibility

Since commencement of the Patents Act 1990 in 1991, up until the end of August 2018, the Australian Patent Office has issued 1,851 published decisions (including, in earlier years, decisions relating to applications filed under the 1952 Act but issued under the transitional provisions of the 1990 Act).  Of these, decisions on substantive oppositions to the grant of standard patents have been by far the most common (666 in total).  Indeed, the vast majority of Patent Office decisions relate in one way or another to opposition proceedings, with the next most-frequent being procedural matters associated with oppositions (including decisions on costs, and final decisions following applicant amendments), and decisions on extensions of time to serve/file evidence.

Analysis of decisions issued by the Patent Office over time also highlights the impact of changes in law and practice, including the effect of amendments to the rules governing the grant of extensions of time in patent oppositions which came into effect with the Raising the Bar reforms in 2013.  The rate at which substantive opposition decisions, and decisions on extensions of time to file evidence, have issued since this time are consistent with other data indicating that the reforms have been effective in improving the efficiency of patent opposition proceedings.

Even more remarkable, however, is what the data reveals about the effect of recent changes in practice and case law relating to patent-eligibility of ‘contentious’ subject matter, and in particular of computer-implemented inventions.  Since 21 July 2010, when the Patent Office issued its decision in Invention Pathways Pty Ltd [2010] APO 10, there has been a total of 53 published decisions relating to examination objections asserting that the claimed inventions were not for patent-eligible subject matter (i.e. a ‘manner of manufacture’ under Australian law).  As I have noted on a number of occasions (most recently in Continuing Hostility to Computer Implemented Inventions Lands the Commissioner of Patents in Court. Again. Twice. and Computer-Implemented Inventions and the ‘Ball Point Pen Principle’ – Why the Australian Law on Patent-Eligibility is a Mess), the vast majority of these decisions have upheld the examiners’ objections, resulting in the applications being refused. 

What is even more remarkable about this, however, is that the number of such decisions over just the past eight years is more than double the grand total of just 21 decisions issued over the entirety of the preceding 19 years in relation to all available grounds of examination objection.  Furthermore, 38 of those 53 decisions have been handed down just within the past three calendar years.

As I have said before (e.g. in …Why the Australian Law on Patent-Eligibility is a Mess, linked above), this recent high incidence of applicants taking examination objections to hearings is a bad sign for the state of Australian patent law in relation to subject-matter eligibility.  The large number of decisions is bringing less, rather than more, clarity to the law, reflecting a high level of uncertainty, and a widespread lack of agreement among patent applicants, attorneys, examiners, hearing officers, and judges as to exactly what the law is – or should be – in this area.  And this uncertainty is not good for innovation and investment in digital technologies, because where there is uncertainty around the availability of IP protection, investors can have no confidence in either the ability to defend their own IP position, or of having freedom-to-operate in the relevant technical space.  Uncertainty thus discourages investment, and in this sense works directly against the incentive that the patent system is intended to provide.

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Tags: Australia, Examination, Opposition, Patent analytics, Patent Office, Patentable subject matter, Raising the Bar

Patent Applicants Are the Most Prolific Patent Opponents

A few weeks back I looked at the geographical origins of participants in Australia’s patent opposition system, finding that Australian residents are overwhelmingly the most likely to oppose patents, and proportionately the most likely applicants to be opposed (although, numerically, US-originating applications are opposed slightly more often).  Under the current Australian law, anyone can oppose the grant of a standard patent, or the certification of an innovation patent, for any reason, although it is reasonable to suppose that most oppositions are filed by companies or individuals with concerns about prospective infringement.  It is, of course, perfectly possible to infringe somebody else’s patent without having had any prior involvement with the patent system.  There is certainly no requirement to have any patents or applications of your own in order to be at risk of infringement, or to have reason to wish to oppose a competitor’s application or patent.

Nonetheless, from analysing data available in the 2017 edition of IP Australia’s IP Government Open Data (IPGOD) set, I have found that one thing that the vast majority of patent opponents have in common is that they are also the owners of their own patents and/or applications.  Of 1,234 oppositions to standard patents (under section 59 of the Patents Act 1990) and to innovation patents (under section 101M) between 2004 and 2016, an overwhelming 82% were filed by entities (which I shall call ‘applicant-opponents’) that also filed at least one patent application during this period. 

Furthermore, while applicant-opponents made up only 0.33% of all patent applicants, they were collectively responsible for filing 6.6% of all Australian patent applications between 2004 and 2016.  The top 30 patent filers over this time includes 10 applicant-opponents. 

In one respect, this is not a surprising discovery.  Parties that are engaged with the patent system in one aspect (e.g. as patent applicants) are presumably more likely to be engaged in  range of other aspects, such as searching of patent registers and databases, monitoring their competitors’ patenting activities, identifying and watching applications that may present an infringement concern, and opposing in cases where it is deemed to be worthwhile in order to mitigate risk or curb overly-expansive patent claims.

On the other hand, as I have already noted anybody can become an infringer, whether wittingly or unwittingly.  It is therefore a little disturbing that the opposition data indicates that parties without patents or applications of their own appear to take little interest in the risks potentially presented by their competitors’ patent applications.

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Tags: Australia, IPGOD, Opposition, Patent analytics

Users of the Australian Pre-Grant Patent Opposition System

Australia has a pre-grant patent opposition system, meaning that an opportunity is provided after a standard patent application has been approved by an examiner, but before a patent is actually granted, for third parties to raise objections.  Specifically, once an application has be accepted for grant, the accepted specification is published and there is then a three-month period during which anybody who believes that the granted patent would be invalid (wholly, or in-part) may file a notice of opposition.  The filing of such a notice commences the formal opposition procedures defined in the Australian Patents Act 1990 and Patents Regulations 1991, which are described in greater detail in this earlier article.  It is also possible to oppose an Australian innovation patent, via a similar procedure.  However, since innovation patents are initially granted quickly, without substantive examination, and can only be opposed after examination and certification, the corresponding opposition proceedings are necessarily initiated post-grant.

The World Intellectual Property Origanization (WIPO) web site includes a handy primer on opposition systems, which suggests that pre-grant systems are relatively uncommon in the developed world, with Australia being counted among such IP luminaries as Costa Rica, Honduras, Mongolia, Pakistan, and Zambia in providing for pre-grant opposition proceedings.  Although the completeness of the WIPO summary is questionable – it does not, for example, include New Zealand, which has a pre-grant system similar to Australia’s – it is certainly true that none of the so-called ‘IP5’ offices (i.e. the European Patent Office, Japan Patent Office, Korean Intellectual Property Office, State Intellectual Property Office of the People's Republic of China. and the United States Patent and Trademark Office) has such a system.  Other than Australia and New Zealand, it appears that the most significant countries having pre-grant opposition systems are India, Spain, and Portugal.

So, who uses the Australian pre-grant patent opposition system?  Using data available in the 2017 edition of IP Australia’s IP Government Open Data (IPGOD) set, I have analysed information on oppositions to standard and innovation patents commenced since 2004 (when the IPGOD opposition records commence).  This analysis shows that:

1. Australians are overwhelmingly the most common participants in opposition proceedings, with Australian-resident companies or individuals having filed 771 oppositions, and Australians being applicant and/or opponent in two-thirds of all oppositions filed;
2. Australians are almost equally likely to oppose applications by other Australians (261 oppositions filed) and by US residents (262 oppositions filed);
3. the US is the second most common origin of opponents (258 oppositions filed), and US-resident companies or individuals are involved, as applicant and/or opponent, in around one-third of all oppositions;
4. in terms of absolute numbers, US-resident applicants are the most common targets of opposition proceedings (453 cases), however this largely reflects the fact that US residents are by far the largest users of the Australian patent system – in relative terms, Australians are the most likely to be opposed, with oppositions being filed against just over 2% of all accepted applications naming Australian applicants;
5. the Australian opposition system is rarely used by residents of countries other than Australia and the US, with the next most common origins of opponents being New Zealand (45 cases), Germany (34 cases), and the UK and Denmark (tied on 21 cases each);
6. even accounting for the generally low usage of the Australian opposition system other than by Australians and US residents, Japan is a notable anomaly – while Japanese applicants were the second largest beneficiaries of the Australian patent system between 2004 and 2016, receiving over 17,500 patents, Japanese applications were opposed only 22 times, and Japanese residents were responsible for only nine oppositions during this period; and
7. other than relatively high usage by Australians and New Zealanders, and the notably low usage by Japanese, residents of other countries tend to use the Australian opposition system in fairly consistent proportion with their use of the Australian patent system.

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Tags: Australia, IPGOD, Opposition, Patent analytics

Reforms Cut Average Patent Opposition Delays by Two Years, But They Still Take Too Long

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:

1. 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);
2. 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;
3. the average total time required for parties to prepare and file evidence has been slashed from 803 days to just 250 days;
4. 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;
5. 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.

A common contributor to non-evidence-related delays, both before and after a hearing on the substantive merits of an opposition, is the procedure that must be followed if the applicant wishes to amend the application to address grounds of opposition.  Additionally, although appeals of opposition decisions to the Federal Court of Australia are relatively rare, when they do occur they contribute significantly to the average duration and variability of post-decision delays.  Finally, it appears that it is not uncommon for delays to be incurred after finalisation of evidence primarily due to a failure of the Patent Office to progress the opposition expeditiously to a hearing.  These delays may be on the order of many months, as a result of which the average time between completion of evidence and a decision in post-RTB oppositions is now greater than the average time required for preparation and filing of all evidence by both opponent and applicant.

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.

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Tags: Australia, Evidence, Extensions of time, IPGOD, Opposition, Patent analytics, Patent Office

Appeal ‘Incompetent’ – Is This A Problem With Patent Opposition in Australia?

The Australian Patents Act 1990 provides for a pre-grant opposition process.  Specifically, once an application has passed examination, and is accepted, there is a three-month period during which anybody may file an objection, i.e. ‘opposition’, to the grant of a patent.  This allows third parties, such as competitors of the patent applicant, to raise prior art and/or new arguments or grounds for rejection, that may not have been readily available to the examiner.  Opposition provides an additional mechanism for preventing invalid patents from being granted.

Opposition proceedings can be quite involved, although they are generally much simpler and cheaper than court action.  The objecting party, i.e. the ‘opponent’, is required to file a Statement of Grounds and Particulars, outlining the basis for the opposition, so that the applicant can understand, at an early stage, the case it will be required to answer.  Subsequently the opponent must file its evidence in support of the opposition, which may include prior art documents or other information, and/or written testimony of expert witnesses that is relevant to the validity of the accepted patent claims.  The applicant then has an opportunity to file its own answering evidence, and finally the opponent may file further evidence, strictly limited to addressing new issues raised in the applicant’s evidence.

The opposition then typically proceeds to a hearing before an officer at the Australian Patent Office, following which a written decision is issued.  There are a few possible outcomes from an opposition.  At the two extremes, the opposition may be dismissed (i.e. the opponent’s case is found to fail completely) or may be upheld (i.e. all of the opposed claims may be found irredeemably invalid).  However, many cases fall somewhere between these two extremes, with an opposition being only partly successful, and/or the Hearing Officer finding that successful grounds of opposition might nonetheless be overcome by some form of amendment to the patent specification and claims.

An example of this last type of outcome is the subject of a recent decision of the Federal Court of Australia in Merck Sharpe & Dohme (Australia) Pty Ltd v Genentech Inc [2016] FCA 324, which highlights a potential pitfall of the pre-grant opposition process in Australia.  In particular, there are cases in which amendments may be legitimately made that result in claims that are nonetheless potentially invalid, but which cannot be effectively challenged prior to the patent being granted.

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Tags: Amendments, Appeal, Australia, Novelty, Obviousness, Opposition

Patent Oppositions and Amendments: Law Reform Fixes Flaws

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.

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Tags: Amendments, Appeal, Australia, Law reform, Opposition

Undefended Appeal from Opposition Decision a Fait Accompli

Scott v Icon Plastics Pty Ltd [2012] FCA 428 (27 April 2012)

Patent Opposition - Appeal to the Federal Court of Australia - outcome when neither the original opponent nor the Commissioner of Patents appears and no evidence before the court

We reported back in November 2011 on the success of Icon Plastics Pty Ltd in opposing the grant of a patent to Laurence Clifford Scott, on the basis that Scott was not entitled to the patent, because he was neither the inventor nor a legitimate assignee of the inventor. According to Icon, the invention disclosed and claimed in the application was actually devised by Icon General Manager Royston Douglas Bull (‘Bull’), had been misappropriated by Scott, and wrongfully made the subject of the application in Scott’s name.  (See ‘Stolen’ Invention Restored to Rightful Owner.)

Scott appealed the opposition decision to the Federal Court.  However, Icon Plastics declined to participate in the court proceedings, agreeing to submit to the court’s judgement (except with respect to any award of costs).

As in similar previous cases, the court was unable to uphold any ground of opposition in the absence of any relevant evidence having actually been adduced during the proceedings.

Therefore the appeal has been allowed, and the patent has proceeded to grant in Scott’s name.

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Tags: Appeal, Australia, Opposition

Australian Patent Office Discretion in Opposition Proceedings

Alcon Research, Ltd v Sylentis S.A.U. [2012] APO 55 (29 May 2012)
BHP Billiton Worsley Alumina Pty Ltd v Alcoa of Australia Limited [2012] APO 60 (13 June 2012)
Gallus Ferd, Ruesch AG v Strork Prints B.V. [2012] APO 46 (2 May 2012)
Neste Oil Oyj v BP International Limited [2012] APO 20 (1 February 2012)
BP International Limited v Neste Oil Oyj [2012] APO 40 (28 March 2012)

Patent Office practice and procedure – Regulation 5.10 – extensions of time and other conduct of opposition proceedings – exercise of discretion – satisfactory explanations – significance of evidence and public interest in oppositions being considered on merit

Regulation 5.10 of the Australian Patents Regulations 1991 gives wide-ranging discretionary powers to the Patent Office for directing the conduct of opposition proceedings.  In particular, the regulations provide for time limits – such as those applying to the service of evidence – to be extended, and for parties to apply to serve additional evidence in appropriate circumstances.

A number of recent decisions by delegates of the Commissioner or Patents highlight the factors which the Office will currently take into account when deciding whether or not to exercise discretion in favour of a party to an opposition.  The major considerations are:

1. whether the party requesting the exercise of discretion, e.g. to extend a time period, or to allow service of further evidence, has provided an adequate explanation of its reasons for requiring the indulgence; and
2. whether there is a probability that the exercise of the discretion as requested will have a significant impact on the outcome of the opposition.

It is not necessary that the party provide a ‘full and frank’ disclosure of all of the circumstances leading to the requirement for the exercise of discretion.  Nor is it necessary to establish any particular likelihood that the exercise would be determinative of the outcome of the opposition.

Nonetheless, any party seeking a favourable hearing from the Patent Office in an application relating to the conduct of opposition proceedings would be well-advised to make sure they have both of the above points well covered.  This advice is illustrated by the following recent examples.

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Tags: Australia, Extensions of time, Opposition, Patent Office

Attacking Australian Patents – Re-examination & Revocation

As many readers will be aware, Australia has a pre-grant opposition procedure which can be used to challenge a decision of the Australian Patent Office to issue a patent.  Opposition proceedings are conducted before the Patent Office, and are initiated by the opponent filing a Notice of Opposition.

There is, however, only a limited time period within which to oppose an application once it has passed examination.  Specifically, details of the accepted application are published in the Australian Official Journal of Patents, and the official publication date (which is also listed in the AusPat database record for the application) commences a three-month opposition period.

Once the opposition period has expired, it is generally no longer possible to oppose the application.  In exceptional circumstances, an extension of time to lodge a Notice of Opposition may be available, however once the patent has actually issued there is no longer any possibility of opposing, because the grant of a patent is not reversible.

So what can be done about granted patents which are of doubtful validity, and which may be of concern to another party operating within the Australian market?  There are two options available in this situation:

1. requesting re-examination by the Patent Office; and/or
2. commencing revocation proceedings in the Federal Court of Australia.

The procedures, pros and cons of each are discussed in this article.

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Tags: Australia, Opposition, Reexamination, Revocation

Contact Lens Cleaning Method ‘Inherently’ Anticipated by Prior Use

Abbott Medical Optics, Inc v Alcon Laboratories, Inc [2011] APO 79 (26 September 2011)

Opposition – novelty – whether claimed method anticipated by prior published instructions and prior use where benefits of method previously unrecognised – whether ‘strict proof’ of prior use required

This decision, issued by Delegate Dr B. Akhurst, concerns methods for the care of contact lenses.  In particular, the invention at issue is directed to the use of a single solution for cleaning and disinfecting contact lenses.

The interesting aspect of the decision is its analysis of novelty in the case that the claimed method may have been taught/performed before the relevant priority date, even though the actual inventive contribution or discovery of the later inventor may not have been previously disclosed or recognised.

In some other jurisdictions, such as the US, this situation would fall under the ‘doctrine of inherency’.  In Australia, there is no formal legal ‘doctrine’ of inherency although – as this decision demonstrates – this does not mean that it is necessarily possible to obtain a patent based merely on the discovery of a previously unknown property of a known process or composition.  In place of any distinct doctrine, the notion of inherency is itself inherent in the established tests for novelty of a claimed invention.

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Tags: Australia, Inherency, Novelty, Opposition

Now It’s FOXTEL versus TiVo Down Under!

Over the past six months or so, FOXTEL Management Pty Ltd (‘FOXTEL’) has opposed the grant of no fewer than nine patent applications in the name of TiVo, Inc.

We suspect that this may turn out to be the beginning of a protracted dispute between the two companies.  At stake is the very viability of TiVo’s technology in the Australian marketplace, while FOXTEL’s freedom to continue providing advanced digital home entertainment services is also on the line.

The fact is that TiVo has failed to make a big impact in the Australian market.  At the same time, FOXTEL is providing digital cable television services that include ‘intelligent’ features almost identical with those of TiVo’s ‘smart digital video recorders’. 

Even without looking at the details of TiVo’s patent applications, it seems inevitable that FOXTEL would infringe at least some of the patent claims should the applications proceed to grant.

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Tags: Australia, FOXTEL v TiVo, Opposition

Cadbury Objections to Nestle Amendment Too Little, Too Late

Societe des Produits Nestle S.A v Cadbury Holdings Limited [2011] APO 35 (31 May 2011)

Opposition – final determination – amendments consistent with findings of initial decision sufficient to overcome grounds of opposition – opponent too late to raise objections to initial findings

This decision by Hearing Officer Karen Ayres is a final determination of an opposition originally heard on 24 March 2010, with the initial decision being issued on 24 June 2010 (Societe Des Produits Nestle S.A. v Cadbury Holdings Limited [2010] APO 9).

This case is a lesson for practitioners of the importance of identifying appealable findings in a decision, and filing any appeal within the relevant time limit following the date of the decision.  The fact that a decision may be of an ‘interim’ nature, and not a final determination, does not mean that any objection to, or appeal of, specific findings in the decision can be delayed until the time of final determination.

SUMMARY

Cadbury Holdings Ltd (‘Cadbury’) had been partially successful in an opposition to a patent application filed by Societe Des Produits Nestle S.A (‘Nestle’), however the Hearing Officer had provided Nestle with a strong indication of the nature and scope of patentable subject matter in the application, and provided it with an opportunity to amend its claims to overcome the successful ground of opposition.

Nestle duly made the suggested amendment, which was subsequently allowed by the Patent Office, and the case returned to the Hearing Officer for final determination.  It was only at this stage that Cadbury raised objections to the amended claims.

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Tags: Amendments, Appeal, Australia, Novelty, Opposition

Attorneys Beware – Hospitalisation, Holidays No Excuse for Delay!

Woven Image Pty Limited v Autex Industries Limited [2011] APO 29 (10 May 2011)

Opposition – request for extension of time to serve evidence in support – whether hospitalisation of supervising attorney constitutes a satisfactory explanation of delay – whether unavailability of expert witnesses over holiday period constitutes a satisfactory explanation of delay

'You know, Bill, there's such a thing
as being too prompt and diligent!'

We have written previously on the difficulties faced by the Australian Patent Office in keeping opposition proceedings on-track, in view of the restraints imposed by the Federal Court on refusing requests for extensions of time under the current provisions (see Proceedings in Other Jurisdictions No Excuse for Delay).

Thus, although it is not mandatory to provide a satisfactory explanation in order to be granted an extension of time, it is generally necessary to provide some explanation for the delay.  And, even though the Office may ultimately grant an extension, after taking all of the relevant factors into account, it may nonetheless clearly indicate that the explanation provided is unsatisfactory.

This decision by Delegate Greg Powell is a case in point.  These types of decisions may take on more significance in the future, in providing guidance as to the circumstances in which it might be considered appropriate to grant extensions of time.  IP Australia’s reform agenda includes making amendments to the Patents Regulations 1991 which would prevent the grant of extensions of time in oppositions unless the Commissioner were satisfied that it is warranted in the circumstances (see IP Australia’s consultation paper Resolving Patent Opposition Proceedings Faster, pp. 12-13).  This change would make the explanation for any delay the primary consideration in deciding whether or not to grant an extension of time. 

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Tags: Extensions of time, Law reform, Opposition, Patent law

Patent Reform Exposed Part VII – ‘Search to Sealing, and Beyond…’

In previous articles of this series, we have looked in detail at a number of the main proposals in the Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 which would change the substantive requirements for validity of a patent.  In this article, we look at some of the proposals that would change practices, and some of the standards applied, within the Patent Office. 

While some such proposals may affect whether or not a patent is granted, none have any impact on the validity of a granted patent.  The objective is essentially to raise the standards of examination in order to reduce the number of patents actually granted with invalid claims.  As many readers will no doubt be aware, there is no ‘presumption of validity’ of a granted patent in Australia.  On the contrary, section 20 of the Patents Act 1990  expressly disavows any such presumption, and makes clear that the work of the Patent Office is conducted on an ‘all care, but no responsibility’ basis.

The proposed changes discussed below are:

1. provision for preliminary search and opinion;
2. examination of utility;
3. permitting examiners to consider evidence of ‘prior use’;
4. lowering the barrier to refusal of an application; and
5. changes to amendment provisions.

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Tags: Amendments, Australia, Examination, Law reform, Opposition, Patent law, Raising the Bar

NZ Patent Office Rejects Applicant's Late-Filed Evidence

Foot Steps Orthotics Pty Limited v Foot Science International Limited [2010] NZIPOPAT 21 (22 October 2010)

Opposition proceedings – admissibility of late-filed evidence

In this New Zealand Patent Office decision, Assistant Commissioner A Hazelwood considered whether patent applicant Foot Steps Orthotics Pty Ltd ("Foot Steps") should be permitted to file additional evidence after the conclusion of the normal evidentiary stages of an opposition by Foot Science International Ltd ("Foot Science").

Foot Steps had submitted that the late evidence was necessary to address criticisms raised in Foot Science's final evidence in reply in relation to the experience and qualification of Foot Steps' expert witness, and that for this reason the evidence could not have been lodged earlier.

The NZ Patent Office had initially proposed to allow the evidence to be filed, with Foot Science then being provided with an opportunity to file its own further evidence in reply.  The decision states (at paragraph [01.15]) that the applicant then sought a hearing on the admissibility of the evidence, although it seems to us that this may be an error, it being more likely that the opponent would have objections to the late filing of evidence.

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Tags: Evidence, New Zealand, Opposition

Rules for Calculation of Time Periods Measured in Months

Make sure you mark the
right date!

In an Official Notice issued on 30 September 2010, which appears to have taken everybody by surprise, the UK Intellectual Property Office (UKIPO) has announced a change in practice in relation to the period allowed for filing a Notice of Opposition to the registration of a national trade mark.  Specifically, the expiry of the two-month opposition period has been reduced by one day.

For example, if an application is published for acceptance on 6 October 2010, it would previously have been the case that a Notice of Opposition could be filed up until 6 December 2010.  Under the new practice, the final date for filing a Notice of Opposition is 5 December 2010.

While we do not usually trouble ourselves with trade mark matters on the aptly-named Patentology blog, this sudden change in practice by the UKIPO gave us pause to wonder whether some similar surprise may be lurking unnoticed in any of the regulations we operate under in our day-to-day practice.  We are pleased to report that this seems unlikely and, indeed, this particular UK rule appears to be an anomaly.

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Tags: Australia, Deadlines, Europe, New Zealand, Opposition, UK

Proceedings in Other Jurisdictions No Excuse for Delay

Wyeth v The Kennedy Institute of Rheumatology [2010] APO 20 (21 September 2010)

Opposition – request for extension of time to serve evidence in answer – whether waiting for decision from the European Patent Office constitutes a satisfactory explanation of delay.

Current practices relating to the grant of extensions of time in Australian patent opposition proceedings are relatively generous, although IP Australia has clearly indicated its desire and intention to introduce a stricter regulatory regime in order to improve the speed and efficiency of an often drawn-out process.

Nonetheless, there are limits to the reasons that  may be considered acceptable excuses for delay, as this decision from Delegate Dr Steven Barker demonstrates.  Although the patent applicant in this case was granted the requested extension of time on other grounds (not least the fact that by the time the hearing took place the evidence had already been served), it is clear from this decision that waiting for an outcome in related proceedings in other jurisdictions is not, in itself, an adequate excuse.

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Tags: Extensions of time, Opposition

Divisional Decision Defies Deductive Determination

Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 18 (8 September 2010)
Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 19 (8 September 2010)

Opposition – original application and corresponding divisional application both opposed – whether claims of both applications lack novelty, inventive step and/or clarity – whether claims 23 to 37 of divisional application entitled to the priority date of the parent application – whether claims 23 to 37 of divisional application lack novelty and inventive step in light of original application publication

These two Patent Office decisions, both penned by hearing officer Jacob Elijah, relate to oppositions filed by Memcor Australia Pty Ltd ("Memcor") against an initial application no. 715364 ("the parent") and an associated divisional application no. 2004203856 ("the divisional"), both in the name of GE BetzDearborn Canada Company ("GE").  The applications are directed to relatively large systems for the microfiltration of liquids, typically water in applications such as wastewater treatment.  Both have substantially the same descriptions, but different claims.

Our interest in these cases is not in the substantive basis of the oppositions.  Memcor asserted the unexceptional grounds of lack of novelty, lack of inventive step (ie obviousness) and lack of clarity.  A number of prior art documents, and much expert evidence, was tendered and considered in the decision.  Memcor was unsuccessful on all substantive grounds.

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Tags: Australia, Divisional applications, Opposition, Priority claim