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The following article summarises the various options for challenging the validity of an Australian patent or patent application. The Full article can be accessed here:

Challenging an Australian patent application or granted patentSometimes an entity becomes concerned about the Australian patent rights that a competitor has applied for or had granted. Primarily these concerns will be driven by “freedom to operate,” as their competitor’s patent rights may restrict or prevent that entity from commercialising a similar or related product in Australia. Below is a summary of the different options that are available.

Third-party examination   If a request for examination has not been filed by the patent applicant, a third party may request examination of the application. The third party must pay half of the official examination fees, and the patent applicant will then be directed to pay the remainder if they wish to continue with the application. 

Third-party observations  A “Notice of Matters Affecting Validity” more commonly referred to as “third-party observations” may be made at any time after publication and before grant of the patent, and in practice this is most common during examination, or before examination has commenced. The third party may remain anonymous, and they can submit prior art and accompanying observations for the Examiner to consider. Third party observations are limited to the grounds of lack of novelty or inventive step, and other grounds of invalidity may not be raised.

Request for re-examination   Re-examination of an Australian patent (or patent application) may occur at any time during the term of the patent, at the Commissioner’s discretion, or as directed by the Federal Court of Australia. The Commissioner must re-examine a granted patent when requested to do so by a third party, but requests for re-examination of pending applications are considered on a discretionary basis. 

Re-examination can be conducted based on additional grounds beyond those available under third-party observations or third-party examination, so this approach can be more powerful in some scenarios.  

Opposition  An opposition to the granting of a patent can be filed within 3 months of the acceptance being formally advertised. This process is inter-partes, meaning that both the patent applicant and opponent have several opportunities to submit evidence in support of their case. Evidence is normally provided in the form of declarations made by suitably skilled experts, and the matter is decided at a Patent Office hearing by a senior delegate of the Commissioner. The opposition process can take several years from end to end, and the decision of the Patent Office may be appealed at the Federal Court of Australia.

Revocation The final pathway to challenging the validity of a patent after grant is to seek revocation before the Federal Court of Australia. Revocation proceedings may be based on all grounds of invalidity. It should be noted that the party seeking revocation is not permitted to remain anonymous, and such revocation attempts are commonly countered with a crossclaim for infringement.

If you would like any further information on this topic, please reach out to one of our Patent attorneys. We would be happy to schedule a Teams meeting to discuss

Chris Atichian is a partner and has practiced for over 22 years with respect to mechanical patents and design registrations. Chris specialises in the protection and enforcement of invention in fields including drilling, medical devices, aircraft and sporting goods. Recommended by IAM patent 1000 in 2022, Chris is the current treasurer of FICPI Australia. Read more...

Dan Berger is a partner specialising in the protection of medical devices and surgical instrumentation, nanotechnology devices and nanostructured materials. Recommended by IAM patent 1000 in 2022, Dan has a strong practice with respect to design registrations. Read more...

Several of our Patent and Trade Mark Attorneys will be attending IP conferences in 2023. If you wish to meet during INTA in Singapore please contact us to schedule a time.

Halfords IP – trusted since 1979 The Australian IP landscape has undergone some significant changes in the last decade, and now the majority of the established firms are owned by two holding companies listed on the local stock exchange. Halfords IP is one of the few remaining traditional partnership owned firms. This enables us to provide the highest quality services, without having the challenges of external investors, or competing with other firms in the same ownership group. Our traditional values enable us to put you and your clients first. Click here to read more.

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