Acceptance of a patent application
A patent application goes through an examination process prior to grant. The Examiner may raise a number of objections. If no objections are raised, or once the objections have been successfully addressed by the applicant, a patent application will be accepted. If no opposition proceedings are started within three months of the patent being advertised as accepted, the patent will be granted upon payment of the required fees. A patent will generally last for 20 years (up to 25 years for some pharmaceutical patents) provided the annual renewal fees are paid.
Opposition to grant of a standard patent
After a standard patent application is advertised as being accepted in the Australian Official Journal of Patents, there is a three-month period in which a notice of opposition to grant can be filed. Once a notice of opposition has been filed, the person lodging the notice has a further three months to lodge a statement of grounds and particulars. The statement of grounds and particulars sets out the basis for the opposition and needs to refer to documents that will be relied on to prove the grounds raised during the opposition and a copy of all the documents need to be submitted at the same time as the statement of grounds and particulars.
Grounds for opposition to grant
The grant of a patent may be opposed on a number of grounds. The grounds most often relied upon are that the invention is not novel and/or inventive or that the person listed as the owner of the patent is not entitled to the patent. It is important to note that ownership can be disputed at any time and is not limited to the same timing as filing an opposition notice. Further grounds for opposition are also mentioned below.
Stages in an opposition proceeding
Once the notice of opposition and statement of grounds and particulars has been filed, the following occurs:
- The opponent has to file their evidence in support of the opposition within three months;
- The applicant has 3 months to file their evidence in answer;
- The opponent then has another 3 months to file evidence in reply.
Evidence is led through statutory declaration prepared by expert witnesses. Once all the evidence has been received, the Commissioner of Patents will review the evidence and decide whether to hold an oral hearing or a hearing by written submissions. Written submissions need to be prepared and submitted prior to the hearing. The deadline for written submissions to be submitted is ten days before the hearing for the opponent and five days for the applicant. If the hearing is solely by written submissions, the Commissioner will notify both parties of the relevant deadlines.
The Delegate shall notify both parties of the result of the opposition hearing within 3 months of the hearing. If the opposition is successful, the applicant is given an opportunity to amend the patent application to address the issues raised in the opposition. If the opposition is unsuccessful, the patent application will proceed to grant. Both parties may lodge an appeal with the Federal Court.
There are administrative costs associated with filing a notice of opposition. There may also be substantial legal costs and expert costs associated with the preparation and submission of evidence. An award of costs can be made in favour of the successful party but these are generally limited according to a schedule of charges set out in the patent regulations.
A number of other objections can be raised at different stages of the application: These include an objection to:
- The ownership of the patent. A dispute in relation to ownership can be filed at any time before the grant of the patent.
- An applicant’s request to amend the patent specification.
- The decision to grant an extension of time.
- An extension of the term of a pharmaceutical patent.
- The patent owner’s decision to license the use of an invention.
- Process an applicant’s request to amend their patent specification.
Alternatives to starting opposition proceedings
The costs of lodging and preparing expert evidence for opposition proceedings can be substantial. There are a number of other options which may prevent the grant of a patent without having to incur the costs of an opposition proceeding. These include:
- Lodging a notice under s27 of the Patents Act. This allows anyone to file submissions that may affect validity anytime from the time the patent specification is open to public inspection to three months after the publication of the acceptance of the patent specification. The notice allows any interested party to provide evidence that may challenge the requirements of novelty and/or inventive step of the patent application to be considered by the Examiner during examination or re-examination.
- Request for re-examination – any third party can request that a patent be re-examined. This is usually done on the grounds that the claims in the patent are for an invention that are not novel and/or inventive. However, a request for re-examination can be made on a number of other grounds such as that the claims are unclear. A request for re-examination can only be made after a patent has been granted. The party lodging the request can do so online and the request needs to include a description of the grounds as well as all supporting documentation.