2.22.1 Introduction

Note: Prior to 15 April 2013, the only grounds available for consideration during re-examination were novelty and inventive/innovative step.  For re-examination reports issued on or after 15 April 2013, expanded grounds are available for consideration during re-examination (see 2.22.4.1 Scope of the Consideration).  This applies regardless of whether the report is an initial report, or a subsequent adverse report.

In this topic:

General

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. This procedure allows the Office to decide certain questions of validity in accepted applications for standard patents, granted standard patents and certified innovation patents.

The substantive grounds available for consideration during re-examination are listed in 2.22.4.1 Scope of the Consideration. The process is instigated 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 procedure is ex parte, i.e. does not involve a third party who requests re-examination.

The Commissioner will instigate re-examination voluntarily only if an adverse re-examination report will issue. Consequently, the report will only refer to citations which give rise to an objection. In contrast, the Commissioner must re-examine where the patentee or third party requests re-examination. In these circumstances, the report will address all citations provided in the request and may be favourable in some or all respects. The standard required for both types of reports is the same as the third report standard.

The practices and procedures set out below relate to re-examination under Chapter 9 of standard patents and applications therefor. Corresponding practices and procedures apply to re-examination of certified innovation patents under Chapter 9A, Part 2.

Initiation of Re-Examination

Third Party Requests

Patent Oppositions will prepare a hard copy folder of the documents that have been filed in support of the request and send it to the relevant examination section through the internal mail system. The supervising examiner will then assign the folder to an examiner for re-examination. For third party requests, re-examination must be conducted and either an adverse or non-adverse report must be issued.

Withdrawn Oppositions

Patent Oppositions will send the hard copy opposition file to the relevant examination section through the internal mail system. The supervising examiner will then assign the file to an examiner for review. The examiner will conduct a re-examination only if it is warranted and with the agreement of the supervising examiner.

Examiners should not automatically review all documents listed in the statement of grounds and particulars.  Where the relevance of the documents is stated, examiners should consider this and focus on those documents where there is reason to believe they could be citations.  Where there is no relevance indicated, examiners would not normally have reason to believe that any of the documents could be a citation.  However, in the case of non-patent literature, the title of a document could suggest it is relevant.  Finally, if the statement only lists a small number of documents without indicating their relevance, examiners should review those documents (on the basis that the opponent seems to have been selective and therefore those documents could be particularly relevant).

Section 27 Notices

For notices filed after acceptance, but before grant of a patent, COG will email the supervising examiner of the relevant section and request urgent consideration of the notice.  The supervising examiner will then allocate the task to an examiner for review.  The examiner will conduct a re-examination only if it is warranted and with the agreement of the supervising examiner.

Following Quality Review

A decision should be made within the examination section, and with the agreement of the supervising examiner, as to whether re-examination is warranted.  However, Patent Oppositions must be consulted before proceeding with re-examination.

New Prior Art Located After Acceptance or Grant

A decision should be made within the examination section, and with the agreement of the supervising examiner, as to whether re-examination is warranted in view of the relevant prior art documents.  However, Patent Oppositions must be consulted before proceeding with re-examination.

Overview of Re-Examination Procedure

Allocation of Re-Examination Tasks

The supervising examiner is responsible for the allocation of re-examination tasks within a section.  It is preferable that re-examination is undertaken by an examiner who is not the original examiner.  However, the re-examination should be assigned to whoever is best placed to complete the task within the Customer Service Charter timeframe (see Customer Service Charter Timeliness Guidelines).  Consequently, there may be situations where the original examiner is asked to undertake the re-examination, particularly if that person is best qualified to understand the technology.

Note: Where a quality review has been finalised with a Finding, and that Finding could jeopardise the validity of an accepted application, the re-examination task will be allocated as above.  The examiner assigned the task must consult with Patent Oppositions before proceeding with re-examination.  Any re-examination report should be issued within 8 weeks from the date of finalising the Finding.

Intention to Re-Examine Letter (Section 112)

For re-examination of granted patents, an ‘intention to re-examine’ letter must be sent to the patentee at least 7 days before the re-examination report is issued.  This letter is for the purposes of satisfying the requirements of sec 112 (no letter is required for an application for which a patent has not been granted).  For re-examination based on third party requests, Patent Oppositions will send the letter before the hard copy folder of documents is forwarded to the relevant examination section.

Examiners should not include any further requests for sec 112 information in their re-examination reports, regardless of the time from the date of issue of the first re-examination report until the date of issue of the final non-adverse report.  (Note that a non-adverse report is issued once all the objections raised in an adverse report are overcome).  

Further information regarding post-grant re-examination is provided in 2.22.3.2 Post-Grant (Standard and Innovation Patents).

Report Procedure

Note: There is no re-examination category of task in PAMS.  All re-examinations are done as an Edit Ecase and the appropriate report template must be used.

Once the examiner has completed a draft of the re-examination report it must be supervised by a senior examiner (or if the report is done by a senior examiner, peer reviewed by another senior examiner) and an email then sent to Patent Oppositions (email to ohl@ipaustralia.gov.au) advising that supervision is complete. Patent Oppositions will perform an editorial review of the report to ensure that all reports are broadly consistent in style. Once the examiner has made any changes directed by Patent Oppositions, the report is dispatched in the usual manner. However, Patent Oppositions must be advised by email of the actual date of issue in order to create a diary entry of the 2 month response date.

Further information on the report process is provided in 2.22.5 Re-Examination Report and 2.22.7 Copy of Report on Re-Examination.

An outline of the process, showing the major steps, is provided in the flowchart at 2.22 Annex A - Re-Examination Processing. (Note that this flowchart does not comprehensively include all variations and their steps).

A re-examination checklist is provided at 2.22 Annex C – Re-Examination Checklist.