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Re-Examination, Revocation and Compulsory Licenses




At any time after a patent has been granted a person, a company or the Federal Government may apply to a Court to have the patent revoked (i.e. recalled or repealed). However, there are some extra grounds.

Those grounds of revocation which are also grounds of opposition are:

  • That the patent owner is not entitled to the patent;
  • That the claimed invention is not a manner of manufacture;
  • That the claimed invention is not new (or novel);
  • That the claimed invention did not involve an inventive step; and
  • That the specification
    • Does not fully describe the invention including its best method of performance; or
    • Has claims which are not clear and/or have a scope which extends beyond the general principles of the described example(s) of the invention.

There are three main extra grounds. The most important additional ground is that the invention is not useful. This basically means that the claims include within their scope arrangements which either do not work (because some essential part has been omitted) or do not meet the object of the invention. Suppose in the introduction to the specification there is the statement that the object or the invention was to overcome some particular disadvantage and previous devices. Then, if the claims include within their scope an arrangement which does not overcome the disadvantage, the patent could be revoked. Thus ‘not useful’ here means not able to be used in the way described or promised by the specification.

The second extra ground is that the invention was secretly used for commercial or trade purposes by the patent owner before the priority date of the application. This secret use does not include reasonable trials and experiments, a confidential disclosure made by the patent owner, or disclosure of the invention to a federal or state government body (but does not include local government).

The circumstances to which these two extra grounds apply sometimes arise. Much more rare are the circumstances to which the third extra ground applies. This ground is that the patent, or some amendment to the patent, was obtained by fraud, false suggestion or misrepresentation.

Finally, the circumstances in which the fourth extra ground might apply almost never arise. This extra ground is that the patent owner has contravened (or broken) some condition made when the patent was granted. Since patents are almost never granted with any conditions, this ground can be ignored for all practical purposes.

It is very unusual for a revocation action to be started as an isolated legal proceeding. Instead, what normally happens is that the patent owner commences and action for infringement. Then the defendant, in addition to arguing that he doesn’t infringe, almost always commences a counter-action for revocation. The two actions are normally heard and decided together.

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Compulsory Licenses

It is also possible for a person or company to make an application to a Court to have a compulsory license granted to them. A compulsory license will only be granted if, after three years from the date the patent was granted, the invention has not been put into practice to an extent sufficient to satisfy the reasonable requirements of the general public and the patent owner does not have a satisfactory excuse. The intention of this compulsory license provision is to prevent patent owners ‘bottling up’ inventions for the duration of the patent to the detriment of the general public. However, even though the conditions for granting a compulsory license and both of these applications have been unsuccessful.

Even more unlikely is the revocation of a patent if, after more than two years after the date of grant of the first compulsory license under a patent, the reasonable requirements of the general public in respect of the patented invention have still not been satisfied and the patent owner has no satisfactory excuse. This is especially the case since any compulsory license granted must be a non-exclusive license so that both the licensee and patent owner are able to compete against each other.

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In 1990 the patent legislation was revised and an entirely new concept was introduced. This is the concept of re-examination. Essentially re-examination allows the Commissioner to change his previous decision to grant a patent, and instead either revoke the patent or insist that the patent be amended.

Under the re-examination provisions, the patent can only be revoked under limited grounds. These are that the claimed invention is either not new or does not include an inventive step in the light of previously published documents. Importantly, previous use is not to be considered, even though it can be considered in an opposition.

The re-examination provisions only apply to patents granted on applications lodged after 30 April 1991.

It is expected re-examination will be used extensively.

Before the re-examination procedure was introduced, you would probably have had to start your commercial activity whilst relying on your patent attorney’s advice that the patent may be invalid because of the prior publications. You would also have been hoping that the patent owner would not sue you for infringement so that the expense of legal proceedings could be avoided.

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Our dedicated team can assist you with all matters relating to developing or protecting your Intellectual Property, including licensing and appeals. Complete and submit the Express Enquiry form on the top right hand side of this page and we will contact you to discuss your enquiry or call us on 1300 QUINNS (1300 784 667) or on +61 2 9223 9166 to arrange an appointment.