Post-Grant (Standard and Innovation Patents)

Date Published

At any time after grant of a standard patent or certification of an innovation patent, the patentee or any other person may request re-examination. 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.

Note: Commissioner initiated re-examination of a patent which is related to an application undergoing examination should be discussed with Patent Oppositions prior to issuing any re-examination report.

Intention to Re-Examine Letter (Section 112)

Under sec 97(4) and sec 101K(2), the Commissioner must not re-examine a patent where relevant proceedings are pending. Where relevant proceedings are initiated after re-examination has commenced, there are statutory provisions suspending the re-examination process (sec 97(5) and sec 101K(3)).

Before re-examining a granted patent, examiners must check the file to see if there is any indication of court action. Where a third party requests re-examination, Patent Oppositions will enquire whether relevant proceedings are pending prior to the case file being referred to the relevant examination section. However, if the Commissioner initiates re-examination, examiners will need to check the file. There may already be a statement that there is no court action, for example, in the case where there is a recent application for an extension of term under sec 70. If there is no indication of a court action on the file, examiners must write to the patentee and inform them that the Commissioner intends to re-examine the patent unless advised within 7 days that relevant proceedings are pending. The following text should be used:

"I am writing to inform you that the Commissioner intends to re-examine the above patent. Under Section 97(4), where relevant proceedings in relation to a patent are pending, the Commissioner must not re-examine the complete specification in relation to the patent.

Please advise the Commissioner of any relevant proceedings or court actions within seven (7) days of the date of this letter.

If no reply to this letter is received within this time, it will be considered that there are no relevant proceedings and the patent will be re-examined and a re-examination report will issue in due course. Under Section 97(5), where the Commissioner has started to re-examine the complete specification and relevant proceedings in relation to a patent are started, the Commissioner must not continue the examination. You are therefore requested to inform the Commissioner of any such proceedings immediately that they are started."

See also 2.22 Annex B – Intention to Re-Examine Letter.

Upon sending the “Intention to Re-Examine Letter” the examiner is to advise Patent Oppositions (via email to ohl@ipaustralia.gov.au) providing the relevant patent number and the date the letter was issued.

The re-examination report must not be issued before the seven day period has expired.

Provided this letter has been sent, examiners should not include any further requests for sec 112 information in their re-examination reports, or request such information prior to completing the sec 104 voluntary allowance form (if appropriate) at the conclusion of the re-examination process.  When completing the form, the box relating to relevant proceedings pending should be checked (on the condition that the intention to re-examine letter was sent and the patentee is aware of the on-going requirement to advise of any proceedings).

Note: Under the Federal and Supreme Court rules, the Commissioner has to be informed of any court action on a patent. However, there have been instances where the parties have neglected to inform the Commissioner of a court action.

Court Directed Re-Examination

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.