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patent revoked (i.e. recalled or repealed).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.
Λ Back to Top
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.
Λ Back to Top
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.
Λ Back to Top
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. |
