5.6.13.1 Commencing re-examination

Date Published

Key Legislation:

Patents Act:

  • s27 Notice of matters affecting validity of standard patents  
  • s59 Opposition to grant of standard patent
  • s100 Copies of report to be given to court
  • s138 Parties to proceedings
  • s233(3) Patents granted under 1952 Act  
  • s234(4) Applications under 1952 Act  
  • Chapter 9 Re-examination of standard patents
  • Chapter 9A part 2 Examination, re-examination and opposition-innovation patents; re-examination of innovation patents

Overview

Chapter 9 of the Act provides for "re-examination" of applications for standard patents and granted standard patents and Chapter 9A, Part 2 provides for "re-examination" of certified innovation patents.

The process of re-examination allows the Office to decide certain questions of validity in:

  • accepted applications for standard patents;
  • granted standard patents; and
  • certified innovation patents.  ​​​​​​​

Circumstances where re-examination can be initiated

Re-examination can be initiated in the following ways:

  • at the Commissioner’s discretion;
  • upon request by the patentee or any interested person; or
  • by the direction of a prescribed court before which the validity of a patent is in dispute.

The Commissioner will initiate re-examination voluntarily only if an adverse report will be issued.

In contrast, where the patentee or a third-party requests re-examination, the Commissioner must re-examine the complete specification. The procedure is ex parte, that is, a third party who requests the re-examination has no right of involvement or appeal.

Time periods when re-examination can be initiated

Re-examination of standard applications by the Commissioner between acceptance and grant

The Commissioner may decide to re-examine a standard patent application at any time between acceptance and grant. The decision to re-examine an accepted application is entirely at the discretion of the Commissioner, that is, no third party (including an opponent) has a right to ask for re-examination to occur before the grant.

A decision to re-examine will typically arise during this period as a result of:

  • an internal Patent Office quality review process;
  • new prior art, such as from an opponent during an opposition;
  • a s27 notice from a third party; or
  • a withdrawn opposition.

In addition, applicants may themselves provide search results or documents that they wish to have considered.

Examiners are to note that Commissioner initiated re-examination of an application which is related to another application undergoing examination should be discussed with Patent Oppositions prior to issuing any re-examination report.

Re-examination of standard applications and innovation patents by the Commissioner during opposition

A decision to re-examine standard applications and innovation patents during opposition is entirely at the discretion of the Commissioner, and neither the opponent nor any other person has the right to ask for re-examination to occur during this period.

The Commissioner will only consider re-examining an application during opposition if it is likely that the opposition proceedings can be curtailed and where all parties agree to re-examination taking place. This is because re-examination is ex parte and the opponent has no right of involvement or appeal. Additionally, how documents, which were raised in opposition, are dealt with in re-examination could be seen as "pre-judging" the opposition.​​​​​​

In a case where there was a significant likelihood that re-examination would prolong the opposition without achieving any better result compared to prompt prosecution of the opposition, re-examination was considered inappropriate (Novozymes A/S v North Carolina State University and Bioresource International, Inc. (2009) APO 18.

Where an opposition has been withdrawn, the opposition file will be referred to the relevant examination section and reviewed by an examiner. In such cases, the examiner will initiate re-examination only if it is warranted and with the agreement of the supervising examiner.

If the decision is not to re-examine then a case note with a subject line stating exactly ‘Decision not to re-examine’ should be placed on file. This is to ensure the efforts of re-examination are captured in our reporting systems.

Where re-examination is required, the report needs to be issued within 8 weeks from the date of withdrawal of the last opposition, consistent with the 3.2 Customer Service Charter (Timeliness Standards).

Re-examination of a standard patent after grant or of an innovation patent after certification

At any time after the grant of a standard patent (or certification of an innovation patent), the patentee or any other person may request re-examination. The Commissioner must re-examine the complete specification under such circumstances.

The Commissioner may also decide to re-examine after the grant or certification of a patent without a request for re-examination being made. This may occur, for example, when a staff member of the Office or the patentee brings to the Commissioner's attention prior art which was not raised in relation to the application at any time pre-grant or pre-certification.

Re-examination based on prior art brought to the attention of the Commissioner by "interested" persons will generally only be undertaken upon a formal request being made by the person(s) concerned.

Examiners are to note that Commissioner initiated re-examination of an application which is related to another application undergoing examination should be discussed with Patent Oppositions prior to issuing any re-examination report.

Re-examination directed by the Court

A prescribed court may, at its discretion, direct the Commissioner to re-examine the complete specification of a patent, the validity of which is in dispute. The Commissioner would present the findings of the re-examination to the court, which could then take the result into account.

In these circumstances, the patentee is notified by the Commissioner of the decision to re-examine the complete specification if the patentee did not request re-examination.

In VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd (2009) FCA 593, the respondent asked the court to order re-examination. The patentee argued that such re-examination would not obviate the need for evidence on the issues of novelty and inventive step. The judge denied the motion, stating that a re-examination would not necessarily expedite proceedings.​​​​​​​

Section 100 requires a copy of the re-examination report, and any statement filed by the applicant or patentee to be given to the court who directed the re-examination.