Australian patent re-examination

Re-examination is one of the options for challenging the validity of an Australian patent or patent application.

When an Australian patent application passes examination, it is ‘accepted’. Typically, a patent is then granted on the application about four or five months later.

Once the application has been accepted, it may be re-examined. Once a patent has been granted, it must be re-examined if someone requests re-examination and pays the applicable A$800 official fee.

The request must be accompanied by an assertion of invalidity and at least minimal argument:

‘A request [for re-examination] must state:

  1. the grounds of the request; and
  2. the reasons why the grounds are relevant to the complete specification’. – Regulation 9.2(1A)

Once the Patent Office has re-examined the patent, it will issue a report. The patentee will then have two months to respond to any adverse comments in the report.

If complex arguments and/or support from expert witnesses etc is required, re-examination may not be the most appropriate option. At least in theory, once re-examination is requested, the requestor has no further involvement, although it is possible to file further requests for re-examination if you are not satisfied with the resolution of the first request.

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

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