Australian Patent Opposition – early identification of expert witnesses recommended

As of 15 April 2013, parties involved in Australian patent oppositions will have less time to prepare evidence in relation to their case. If you are considering opposing the grant of an Australian patent, or are on the receiving end of an opposition notice, you should consider taking immediate action in order to guard against the possibility of incomplete or inadequate evidence being available.

Less time to prepare evidence

In an effort to reduce the overall length of the patent opposition process, the Patent Office is taking steps to make it more difficult to obtain extensions of time to file evidence.

As of 15 April a more rigorous test for the grant of an extension of time will be introduced. Under the new regulations, the party requesting an extension of time will have to show that ‘it has made all reasonable efforts to comply with all the relevant filing requirements’ and ‘despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so’. Alternatively, an ‘exceptional circumstance’ must exist to justify the extension of time.

In contrast to the European patent opposition process, evidence in Australian patent oppositions usually takes the form of declarations from technical experts. The purpose of expert evidence is to attest to the state of the art, the ‘common general knowledge’ and the teaching of prior art references. Under current practice the Patent Office will rarely consider any information that does not form part of expert evidence. Extension of time requests during opposition are, for the most part, a necessity associated with the difficulty in identifying a suitable expert and subsequently procuring the expert’s opinion. The time required to complete these steps is often outside the control of an applicant, an opponent or their respective legal representatives.

Presently, it is not known how the tightening of extension of time requests will operate in practice. However, given the reliance on expert evidence, it is likely that both applicant and opponent will need to move far more quickly in order to formulate their respective cases. There may well be situations where a party is unable to adequately assemble evidence due to a lack of time.

Opposition timelines

An opposition notice may be filed at any time up to three months after the acceptance of a patent is advertised. Subsequent to filing the notice, the opponent has three months to file its statement of grounds. Then, within a further three months expert evidence in support must be filed.

Once the complete evidence in support has been filed, the applicant then has three months to file its evidence in answer. Subsequently the opponent may file evidence in reply. The period for this is currently three months, but will be reduced to two months after 15 April. These evidence portions of the opposition process have routinely been the subject of numerous extension of time requests and can often result in the overall opposition process taking several years.

For oppositions already underway or where an opposition notice is filed before 15 April 2013 the current law in respect of extension of time requests will apply, but only to the evidentiary round currently in play or initiated before 15 April. For evidentiary rounds initiated after 15 April the new more rigorous test will apply.

Reasons for delay

Delays during opposition are most commonly related to the identification of an expert in terms of relevant expertise, freedom from conflicts and availability in respect of other commitments, particularly work commitments.

However, in a positive development, as of April 15 Australian inventive step provisions are also changing. Under the current law the ‘common general knowledge’ is restricted to that in Australia at the priority date of the application. Under the new provisions ‘common general knowledge’ will be global. As such, there will be no apparent disadvantage in utilising an overseas expert, with the result that overseas entities with patent interests in Australia will be able to call upon a larger pool of potential experts. It is recommended that overseas IP managers responsible for Australian patent rights keep this in mind and perhaps engage in early identification of experts, should they consider opposing the grant of a patent or be the owner of a patent that may itself be opposed.

Recommendations

For Opponents

Prospective opponents are advised to take steps well before a patent application is accepted so as to ascertain the likelihood of the patent being granted with potentially troublesome claims. In the case of an Australian national phase application, savvy operators might already be aware of the application from the international application publication, and may be watching the Australian prosecution. If it appears that troublesome claims will be allowed, and opposition is being considered, immediate steps should be taken to identify an expert.

For Applicants

While it is of course impractical for every applicant to have an expert waiting in the wings on the off chance that the grant of their patent may be opposed, it is often the case that no action is taken in respect of expert selection until after the opponent’s statement of grounds is filed. This may be based on the notion that the details of the opponent’s case might influence expert selection. However, in most cases, taking steps to identify and engage an expert immediately after an opposition notice is received will likely be advantageous in terms of potential time saved.

Further, good intellectual asset practice should alert an entity to those patents in its portfolio that might be subject to opposition, whether that is based on opposition of a corresponding application in another jurisdiction, or on competitive analysis and/or commercial knowledge. Such proactive practice can be advantageous in buying additional time to engage an expert, should an opposition actually occur.

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