Australian patent revocation

Once an Australian patent has been granted, it is possible to apply to the Federal Court for revocation of the patent ‘on one or more of the following grounds, but on no other ground:

(a)  that the patentee is not entitled to the patent;

(b)  that the invention is not a patentable invention [e.g. lack of novelty, lack of an inventive step and/ or lack of usefulness];

(d)  that the patent was obtained by fraud, false suggestion or misrepresentation;

(e)  that an amendment of the patent request or the complete specification was made or obtained by fraud, false suggestion or misrepresentation;

(f)  that the specification does not comply with subsection 40(2) or (3) [Australia’s support, sufficiency/disclosure and best mode requirements]’. – Section 138(3) of the Patents Act 1990

Other options for challenging the validity of an Australian patent or patent application include filing observations, re-examination and patent opposition.

Court proceedings are typically significantly more expensive than these other options, but may be appropriate where:

  • complex argument and/or testimony from expert witnesses etc is required;
  • the discovery of documents is required;
  • the patent specification includes deficiencies more readily correctable if raised in the context of the other options;
  • the other options have been exhausted; or
  • the applicant or patentee is likely to appeal the result of one of the other options to a court.

We are well placed to work with lawyers, barristers and other experts to efficiently prosecute a revocation action.

 

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