The validity of Australian standard patents and standard patent applications can be challenged in the Patent Office through pre-grant oppositions filed in the 3-month window between acceptance by the examiner and grant.
Amendments to accepted or granted patent specifications can be opposed in the Patent Office.
Oppositions to the grant of a patent or the amendment of a specification or claim are conducted much like truncated litigation, with formal statements of positions, written expert and factual evidence, written submissions and (generally) a contested hearing.
For both standard and innovation patents, third parties can file “section 27 notices” submitting prior art and observations at any time and can also request post-grant re-examination.
Challenges to patent ownership can also be made through applications to the Patent Office.
Third parties can also challenge administrative decisions such as extensions of time, pharmaceutical extensions of term, and the addition or removal of an inventor.
Patent infringement proceedings occur in the Federal Court of Australia. The validity of Australian patents can be challenged in the Federal Court through claims for revocation (commenced proactively or as a cross-claim in an infringement suit) or in appeals from Patent Office pre-grant oppositions.
We have great depth and experience in oppositions, litigation and disputes including:
- Conducting numerous complex Patent Office pre-grant opposition proceedings on behalf of patent applicants and opponents in relation to a range of technologies.
- Many patent infringement and revocation proceedings in the Federal Court, acting both for patentees and alleged infringers / revokers, in relation to a range of technologies and industries.
- Preparing and responding to numerous Patent Office post-grant re-examination requests in relation to a range of technologies.