Patent Infringement & Enforcement

If there is a commercial interest in preventing a patent application from proceeding to grant, then a pre-grant challenge may be advisable.  For example, you may be concerned that grant of a patent application may result in infringement proceedings contrary to your interests.

Third Party Observations: 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 Discretionary re-examination is typically triggered by filing third party observations, or when an opposition is withdrawn and the Patent Office considers re-examination warranted in the light of opposition material already on file.

Similarly, if there is a commercial interest in removing a patent from the Register, then post-grant revocation proceedings are available.  For example, after a patent is granted, you may wish to challenge its validity to provide greater freedom to operate. Patent challenges may preempt infringement proceedings or be commenced in response to them.

Revocation Actions: An application may be made to a Court to have a patent revoked. Special mechanisms are also available for correcting entitlement problems and resolving disputes between co-applicants.

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.