24 September 2009
Re-examination of granted patents - worth it?
I recently requested re-examination of a granted patent. This is a procedure governed by section 97(2) of the Patents Act. That section allows you to request IP Australia to re-examine a patent that has been granted in the hope that the patent is either revoked or the patentee is forced to make amendments that narrow the scope of protection afforded by the patent. The request needs to be based on documents published before the priority date of the patent in question. The procedure is ex-parte. That means that once you've lodged the request, your involvement is terminated.
The process sounds good in theory. And in this particular case, the invention defined in the patent was clearly anticipated by at least one of the documents that was submitted. The examiner (a senior examiner, no less) initially reported that the patent should be revoked. The patentee, rightfully, always has a chance to respond. In this case, extensive argument was set out by the patent attorney. In what was a triumph of verbosity over legality, the examiner buckled and agreed that the broadest claim defined a patentable invention in light of the submitted documents.
No-one wants to go to court. However, one has to question a system in which examiners are clearly out-gunned by patent attorneys. If you're ever threatened with patent infringement and you have access to information that clearly invalidates the patent, it may very well be better to call the other side's bluff. In this particular case, an outcome has been delayed unnecessarily for almost a year.
Cold comfort for the allegedly infringing party, but this is exactly why clever people register their intellectual property.