Challenging Patent Applications – To Oppose or Revoke?

Saturday 27th September 2014

New Zealand’s new Patents Act 2013 is now fully in force.  In addition to the well-publicised changes to what constitutes an “invention” under the new Act (think some software in particular) there are some significant changes to the ways in which a patent or pending application can be challenged.

These changes have particular significance for anyone wishing to challenge a patent application which was filed before the new Act came into force on 13 September 2014.  This article looks at the options for challenging those applications in particular. 

Which Act Applies?

Broadly speaking, patent applications filed before 13 September 2014 are governed by the old Patents Act 1953 until they are granted.  However, once granted, the patent is subject to the re-examination and revocation procedures of the new Act.  Patents filed after 13 September 2014 are dealt with exclusively under the new Act.

Revocation A Powerful Option

Under the 1953 Act the threshold for successfully opposing the grant of a patent application was set very high.  Rather than being a rigorous test of the validity of an application, the courts held that an opposition should only be successful where the opponent had shown that the application was “manifestly untenable”. 

Under the provisions of the 1953 Act a challenger cannot succeed in an opposition proceeding simply by showing that the invention protected by a patent application was obvious on the date the application was filed.  Instead, opponents must prove that the invention “clearly” did not involve an inventive step in order to be successful on this ground.  The benefit of any doubt is given to the patent applicant. 
The provisions of the 1953 Act will continue to apply if an application filed under the 1953 Act is opposed before grant.  However, the situation changes significantly if the application is allowed to proceed to grant and an application to revoke the granted patent (which falls under the provisions of the new Act) is filed.   

Under the new Act anyone can apply to the Commissioner of Patents to revoke a patent at any time after the patent has been granted.  The procedure for revocation before the Commissioner is broadly the same as for a pre-grant opposition, but the patent is more vulnerable to attack. 

In a revocation proceeding, a finding that the patented invention was merely “obvious” at the date the patent application was filed will be sufficient to invalidate the claims relating to that invention.  In addition, the patentee no longer receives the benefit of the doubt.  Instead, the Commissioner only needs to be satisfied on the “balance of probabilities” that a ground of revocation has been made out in order to revoke the patent.  Overall, it is likely to be much easier to revoke a patent filed under the old Act than it is to successfully oppose its grant.

Another Option: Re-examination

A new option, re-examination, has also been introduced by the new Act.  Here, a challenger files a request for re-examination, but then takes no further part in the proceedings.  The advantage for the challenger is that no further costs are incurred.  The downside is that, unlike an applicant for revocation or an opponent, the challenger has no opportunity to respond to any arguments made by the patentee which support the validity of its patent. 

An important feature of re-examination of patents filed under the 1953 Act is that the patent will be examined for obviousness for the first time (under the old Act patent examiners did not examine for obviousness).  It is possible that a re-examined patent could be found to be obvious (and therefore invalid) based on documents already considered by the patent examiner during the original examination of the application.

Other Considerations

Of course, there are other strategic considerations at play when deciding whether it is best to oppose an application before grant, or to apply to revoke the patent after grant.  Of importance is the fact that the patent owner can sue for infringement once the patent is granted.  If a challenger already has a competing product on the market then it may be important to prevent the patent from being granted, in which case a pre-grant opposition may be the best option. 

A decision on how to proceed should always be made in consultation with your IP advisor.

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