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Date Published

In the case of re-examination of a granted patent, where an adverse report has been made, the Commissioner may revoke the patent either wholly or in so far as it relates to a particular claim. The Commissioner will give notice in writing of the revocation. The Commissioner must not revoke a patent unless the Commissioner:

  • has given the patentee a reasonable opportunity to be heard; and

  • has, where appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection and the patentee has failed to do so (note also sec 106(1) and sec 101J(3)).

However, before revocation action is initiated, regard should be given to the practice outlined in Subsequent Adverse Reports.

In particular, the allowability of any amendments filed during the re-examination process must be considered and dealt with prior to any decision to revoke the patent (Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; 67 IPR 488).

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