Australian patent invalidation

The validity of an Australian patent or patent application may be challenged by:

• filing third party observations – can be simple and inexpensive;
• re-examination – can be requested once an application has been accepted (i.e. has passed examination);
• patent opposition – the grant of a patent can be opposed within a three-month window that opens when the application has been accepted;
• revocation by a court – once a patent been granted, it is possible to apply to the Federal Court to have the patent revoked.

How best to proceed will depend on:

1. your budget and commercial goals – does the patent or patent application really impede your business? Or are you simply trying to frustrate a competitor? Is the investment justified?
2. the evidence that you have against the patent or patent application – if your evidence is simple and persuasive, one of the simpler options (observations or re-examination) may be appropriate. On the other hand, opposition or court proceedings may be more appropriate if complex expert testimony is required to explain and corroborate the evidence – it may be appropriate to search for additional evidence;
3. how far the patent or patent application has progressed – e.g. simply filing third party observations once a patent has been accepted (passed examination) is unlikely to be productive; and
4. a variety of strategic considerations – e.g. revocation by a court is significantly more expensive than the other options. On the other hand, the other options have the unintended consequence of drawing the patentee’s / applicant’s attention to any problems in time for them to take corrective action.

Please contact us to discuss the option that is best for you.