As soon as a standard patent application is published, options become available for challenging the patent case.
A patent can only be enforced once granted. If you are concerned that allowing a patent to proceed to grant may result in infringement proceedings being commenced contrary to your interests, a pre-grant challenge may be advisable.
After a patent is granted, you may wish to challenge it to provide greater freedom to operate. Patent challenges may preempt infringement proceedings or be commenced in response to them.
There is no single strategy that is appropriate in all circumstances. The course of action for you will depend on your commercial objectives and your specific circumstances. Davies Collison Cave is a full-service firm where our attorneys and lawyers work together to assist you in developing a tailored strategy suited to your needs.
Different options are available for challening a patent or application and these depend on the status of the case:
- Notices of Matters Affecting Validity (NMAVs): A third party can file observations with the Patent Office that Examiners can consider.
- Patent Oppositions: A party can actively contest the grant of a patent on an application. Patent oppositions in Australia are very different from oppositions before other Patent Offices, and can be procedurally complex. Significantly, it is often necessary to lodge expert evidence to support or defend an opposition.
- Discretionary Re-examination: An application can be re-examined at the discretion of the Patent Office. Discretionary re-examination is typically triggered by filing a NMAV, or when an opposition is withdrawn and the Patent Office considers re-examination warranted in the light of opposition material already on file.
- Re-Examination Requests: A party can request, as of right, that the Patent Office re-examine a granted patent in the light of submissions made by that party.
- Revocation Actions: An application may be made to the Federal Court to have a patent revoked. The Federal Court has a panel of judges who handle intellectual property matters.
Similar options are available for challenging innovation patents.
Special mechanisms are also available for correcting entitlement problems and resolving disputes between co-applicants.