Alza Corporation [2012] APO 70 (21 June 2012)
Re-examination – lack of novelty – inherency – role of expert evidence
Back in February we wrote about the available avenues to challenge a granted Australian patent – requesting re-examination by the Patent Office, and/or commencing revocation proceedings in the Federal Court of Australia (see Attacking Australian Patents – Re-examination & Revocation).
Re-examination is by far the cheaper, faster and less complex option, and in principle it allows the party requesting re-examination to remain anonymous. However, it has a number of drawbacks, one of which is that re-examination can be based only upon documentary prior art, and not upon prior art information made available only through the doing of an act, i.e. prior use. Most practitioners would conclude that this limitation prevents the decision maker from considering material other than documents published before the priority date of the patent claims, and in particular that the written or verbal testimony of witnesses would be excluded.
It is therefore interesting that a recent decision of the Australian Patent Office appears to have opened the door to allowing declaratory or affidavit evidence, e.g. of a suitably-qualified expert, to be considered in re-examination proceedings, at least so long as it is ‘primary’ evidence which is pertinent to the matters under consideration.
While the evidence in question concerned the proper interpretation of a prior art document for the purpose of establishing whether or not certain patent claims were novel, there does not appear to be any reason why the same principles would not apply to expert evidence in relation to whether or not a claimed invention involves an inventive step. Loath as we are to utter the words ‘floodgates’ or ‘slippery slope’, we wonder whether this might lead to re-examination becoming a form of ex parte ‘mini-opposition’?
Re-examination – lack of novelty – inherency – role of expert evidence
Back in February we wrote about the available avenues to challenge a granted Australian patent – requesting re-examination by the Patent Office, and/or commencing revocation proceedings in the Federal Court of Australia (see Attacking Australian Patents – Re-examination & Revocation).Re-examination is by far the cheaper, faster and less complex option, and in principle it allows the party requesting re-examination to remain anonymous. However, it has a number of drawbacks, one of which is that re-examination can be based only upon documentary prior art, and not upon prior art information made available only through the doing of an act, i.e. prior use. Most practitioners would conclude that this limitation prevents the decision maker from considering material other than documents published before the priority date of the patent claims, and in particular that the written or verbal testimony of witnesses would be excluded.
It is therefore interesting that a recent decision of the Australian Patent Office appears to have opened the door to allowing declaratory or affidavit evidence, e.g. of a suitably-qualified expert, to be considered in re-examination proceedings, at least so long as it is ‘primary’ evidence which is pertinent to the matters under consideration.
While the evidence in question concerned the proper interpretation of a prior art document for the purpose of establishing whether or not certain patent claims were novel, there does not appear to be any reason why the same principles would not apply to expert evidence in relation to whether or not a claimed invention involves an inventive step. Loath as we are to utter the words ‘floodgates’ or ‘slippery slope’, we wonder whether this might lead to re-examination becoming a form of ex parte ‘mini-opposition’?
Tags: Australia, Evidence, Patent Office, Reexamination
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.
