Filing observations on an Australian patent or patent application

Third party observations asserting that the invention covered by an Australian patent or patent application lacks novelty and/or an inventive step can be filed with the Australian Patent Office at any time after the Australian patent application has been published. The process is straightforward. If the assertion is based on a document, the observations must be accompanied by:

  • ‘a copy of the document; and
  • if the document is not in English, a copy of:
    • a translation of the document into English; and
    • a related certificate of verification; and
  • evidence of the date and place of publication of the document’.

If the document is an earlier patent application (as is often the case), a copy of the official publication of that application would typically be sufficient to satisfy these requirements.

There are no applicable official fees, although, if you are genuinely interested in invalidating the patent application, the observations should be prepared by an Australian patent attorney to put them in the best possible order.

It could be a long time before the observations are considered and even longer before the application ceases to be in force:

  • If the patent application is yet to face examination, the observations would typically then be held on the Patent Office’s file until the application is examined. Examination could be years away – standard patent applications typically face examination two to three years after their filing date.
  • Even once an examination report has issued, the patent applicant would have 12 months from the first examination report to overcome the Examiner’s objections and that period can, in effect, be extended by filing a divisional patent application.

In theory, once the observations have been filed, the third party has no further involvement. In practice, there is no prohibition against filing further observations (e.g. if a report issues and you feel the Examiner has not properly taken account of the observations).

Whilst simply filing observations on a pending application is inexpensive and straightforward, there are some significant disadvantages:

  • It gives the applicant ample opportunity to consider and respond to the observations. Even in the face of highly relevant observations, the applicant might respond by creating a thicket of valid divisional innovation patents (akin to utility models in other jurisdictions).
  • If a patent is granted in the face of the observations, that fact may sway judges (if the patent is litigated), particularly during the interlocutory stages.

Other options for challenging the validity of an Australian patent or patent application include re-examination, patent opposition and applying for revocation by a court.

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