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.
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.
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.
Once the notice of opposition and statement of grounds and particulars has been filed, the following occurs:
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 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:
Unlike established businesses that normally have their IP activities documented in detail by experienced staff, most start-up companies do not have a comprehensive understanding of their IP. This means the traditional questionnaire-centered IP audit approach will not work because the questions may not be interpreted properly, and the answers may not be accurate due to lack of IP experience and valid IP record.
The Australian government has proposed a tax return form that will allow innovators in the medtech and biotech industries to get a tax rebate on revenue from the commercialisation of patented technology.
It’s World IP day! A reminder that a robust IP position can make the world go round. Also a reminder to review your IP position to look at how you can augment or strengthen that position so you can better leverage it.
The Australian government announced the phasing out of the innovation patent. Find out how you can still reap the benefits of the innovation patent.
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