5.6.13.4 Refusal to grant or revocation following re-examination

Also in this Chapter:

• 5.6.13.1 Commencing re-examination
• 5.6.13.2 Re-examination process
• 5.6.13.3 Completion of re-examination

Key Legislation:

Patents Act:

• s97(1) Re-examination of complete specifications
• s100A Refusal to grant patent - re-examination before grant
• s101J(3) Revocation of innovation patent following re-examination
• s106(1) Amendments directed by Commissioner: patents
• s107 Amendments directed by Commissioner: applications for standard patents
• s138 Revocation of patents in other circumstances​​​​​​​

On this page

• Commissioner’s decision to refuse grant of a patent after re-examination:
  • Appeal by the applicant
• Commissioner’s decision to revoke patent after re-examination
  • Appeal by the patentee
  • Appeal by a third party.

Commissioner’s decision to refuse grant of a patent after re-examination

Where an adverse report has been made upon re-examination under s97(1), the Commissioner may refuse to grant the patent on the application (s100A). The Commissioner must not refuse to grant the patent unless the Commissioner:

• has given the applicant a reasonable opportunity to be heard; and
• has, where appropriate, given the applicant a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection and the applicant has failed to do so (note also s107).

However, before refusal action is initiated, consideration needs to be given to whether issuing a subsequent adverse report is a more appropriate course of action (see 5.6.13.2 Re-examination process).

Appeal by the applicant

The applicant may appeal a decision to refuse to grant the patent to the Federal Court.

Commissioner’s decision to revoke patent after re-examination

Where an adverse report has been made upon re-examination of a granted patent, 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 s106(1) and s101J(3)).

However, before revocation action is initiated, consideration needs to be given to whether issuing a subsequent adverse report is a more appropriate course of action (see 5.6.13.2 Re-examination process).

Additionally, 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).

Where relevant proceedings are pending, the patent must not be revoked as a result of re-examination.

Appeal by the patentee

The patentee may appeal a decision to revoke the patent to the Federal Court.

Appeal by a third party

A third party has no right to appeal a decision by the Commissioner on re-examination to the Federal Court. Revocation proceedings under s138 are the only course of action available to a third party.