Our firm has a specialist re-examination practice and we have particular expertise in the re-examination of patents in the pharmaceutical & life sciences sector, and in the electrical engineering, software and IT space.
For many years, re-examination proceedings has been a part of Australian patent practice. Recently there have been new law changes regarding the re-examination provisions so that the grounds of invalidity considered in the re-examination of a standard patent accord with the grounds considered during substantive examination. Specifically, grounds in addition to novelty and inventive step can be considered in re-examination including whether the claimed invention:
- is a manner of manufacture (ie patentable subject matter)
- is useful (ie having specific, substantial and credible utility, and meeting the promise of the invention)
- has been prior used
- is adequately described in and supported by the specification, and
- relates to human beings and/or processes for the generation of human beings.
In addition, the standard of proof in re-examination has been raised to the civil standard of balance of probabilities, (ie whether the Commissioner is satisfied that it is more likely than not that the relevant patent is valid on the relevant ground) which brings the standard of proof into line with that applied by the court.
- re-examination proceeds without assessing if a new question of patentability is raised; and
- the likelihood of at least one claim being unpatentable is irrelevant to the proceeding, we expect that these proposed changes to re-examination should make re-examination a far more attractive option for attacking patents before the Patent Office.' This is particularly the case given that a petitioner who has been unsuccessful in re-examination proceedings will not later be estopped from attacking the patent in revocation proceedings before the court.
Finally, the new law provides that re-examination of patents granted under pre amendment old law will now be assessed on prior art and non prior art grounds as they existed under the old law.