Australian Patent office announces quandary

On 24 September 2008, the Australian Patent Office issued a press release concerning Australian patent application no. 2004309300. The application in question pertains to a human embryonic stem cell line. The press release can be viewed at:

http://www.ipaustralia.gov.au/pdfs/news/IP%20Australia%20statement%20on%20patent%20application%20AU%202004309300.pdf

The quandary faced by the Patent Office is whether to grant the application despite apparent issues which would seriously question the validity of the resulting patent.

While this statement may seem absurd, the underlying issues pertain to the legislated limitations imposed on the Patent Office as to what extent the validity of a patent application can be assessed.

During examination of the application, it came to light that research results contained in the specification had been falsified. Consequently, the specification arguably does not provide directions for implementing the claimed invention which could be reproduced. In terms of validity, this raises questions as to whether the claimed invention is useful, i.e. lacks utility.

The question of utility is not one which is open for consideration by a patent examiner. In other words, it is not an examinable criterion. Hence, in the absence of any other objections, the patent office was obliged to formally accept the application.

Following acceptance of a patent application, a period of three months is provided in which third parties may oppose the grant of the application. Since 2004, under the provisions of the US Free Trade Agreement Implementation Act, utility is available as a ground for opposition. However, no opposition was filed in the relevant time. Consequently, the application is now eligible for sealing by the patent office as a granted patent.

There are clear public policy issues about allowing a questionably invalid patent from being issued and bestowing upon the patentee resulting legal patent rights. While a granted patent found to be invalid can be revoked, the Patent Office cannot revoke a granted patent on its own motion. Revocation follows court-made orders.

Sensibly, the Patent Office has placed a deferment on sealing the application until the quandary is resolved.