Patent Re-examination in Australia

The validity of a patent is not beyond question. Australian Patent law provides mechanisms to reassess whether a patent should continue to enjoy the exclusive rights it confers. One of the most significant post-acceptance mechanisms for doing so is patent re-examination, a procedure administered by IP Australia under the Patents Act 1990 (Cth).

Re-examination occupies a distinctive position within the Australian patent system. It is neither a private dispute resolution mechanism nor a court proceeding. Instead, it is an administrative process through which the Commissioner of Patents may reassess the substantive validity of a patent, applying the same legal standards that govern examination, but with the benefit of new information or renewed scrutiny.

What is Patent Re-examination?

Patent Re-examination is a formal process by which the Commissioner of Patents reconsiders the validity of a patent’s complete specification. For standard patents, this process is governed by Chapter 9 of the Patents Act 1990 (Cth).

Re-examination is a post-acceptance mechanism. It can be initiated at any time after acceptance of a standard patent application, including after acceptance but before grant, and after the patent has been granted.

A defining characteristic of re-examination is its ex-parte nature. Once initiated, the proceeds directly and exclusively between the Commissioner (represented by a patent examiner at IP Australia) and the patentee. While a third party may request re-examination and supply supporting material, they have no further right to be involved. They cannot file further evidence, make arguments in response to the patentee’s submission, be heard by the Commissioner, or appeal the final decision.

This sharply distinguishes re-examination from patent opposition proceedings, which are an inter partes (between parties), or revocation proceedings, which are conducted before a court.

How Re-examination is Initiated?

Re-examination may be commenced through three distinct pathways, each with its own legal and procedural consequences.

Commissioner-Initiated Re-examination

The Commissioner of Patents may initiate re-examine at their own discretion. This most commonly occurs in the period between the acceptance of a standard patent application and its grant. Such an action is typically triggered by:

• Newly identified prior art coming to the Commissioner’s attention, perhaps through a third-party submission via a Section 27 notice;
• New information from a discontinued opposition proceeding; or
• Internal quality assurance reviews within IP Australia.

In practice, IP Australia’s examination guidelines state that the Commissioner will typically only initiate a re-examination where there is a clear intention to issue an adverse report, reflecting a genuine concern regarding the patent’s validity.

Court-Directed Re-examination

A prescribed court, such as the Federal Court of Australia, may direct the Commissioner to re-examine a patent whose validity is already in dispute in a court proceeding. The Commissioner’s subsequent report is then provided to the court to assist in determining validity.

However, such directions are discretionary. As demonstrated in the case of VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd (2009) FCA 593, a court may refuse to order re-examination if it is not convinced the process will simplify or expedite the main court proceedings.

Re-examination on Request

The most common pathway is a formal request for re-examination. This request can be filed by either the patentee themselves or by any person, including a competitor or other third party. If a request is filed for an accepted application (pre-grant), the Commissioner has the discretion on whether or not to conduct the re-examination. However, if a request is filed for a granted patent, the Commissioner must re-examine the complete specification, provided the request is filed correctly. This mandatory re-examination of granted patents is what makes it such a potent tool for third parties seeking to challenge patent validity without commencing litigation.

Where the request relates to an accepted but ungranted application, the Commissioner retains discretion as to whether re-examination will proceed.

Grounds for Re-examination

Historically, re-examination was limited largely to novelty and inventive step. However, following the “Raising the Bar” reforms in 2013, the grounds for re-examination were significantly expanded, making it a much more comprehensive and powerful challenge.

Today, re-examination may address nearly all substantive validity requirements, including whether the invention-

• Lacks novelty (it was not new).
• Lacks an inventive step (it was obvious to a person skilled in the art).
• Is not a patentable invention (it does not meet the “manner of manufacture” requirement).
• Is not useful (it fails to do what the patent claims it will do).

That said, re-examination can now delve into critical issues of patent drafting and also scrutinize compliance with Section 40 of the Patents Act 1990 (Cth), including whether-

• The claims are not clear and succinct.
• The claims are not fully supported by the description.
• The specification does not disclose the invention in a clear and complete manner (enablement requirement).
• The specification does not disclose the best method of performing the invention known to the Applicant.

This broad suite of grounds means that re-examination can expose both substantive patentability defects and drafting-related vulnerabilities, making it a comprehensive validity review mechanism.

Re-examination Procedure

Once re-examination is initiated, a specific and time-sensitive process begins.

The matter is first assigned to a senior examiner at IP Australia, preferably one who was not involved in the original examination, to ensure an independent reassessment. Before any substantive action is taken on a granted patent, IP Australia must first ensure no “relevant proceedings (i.e., court actions)” are pending. This is done by issuing an “Intention to Re-examine” notice to the patentee. The patentee is given a short period, typically at least seven days, to confirm whether any such proceedings exist. If relevant proceedings exist, re-examination cannot proceed. If court proceedings are initiated after re-examination has begun, re-examination must be discontinued.

The examiner then issues either:

• a non-adverse report, confirming no objections and the patent’s validity is effectively confirmed; or
• an adverse report, identifying grounds on which the patent is objectionable.

The adverse report meticulously details each ground of objection and the evidence or reasoning supporting it. The patentee then has a strict two-month period to respond. The patentee’s response may include:

• written submissions, i.e. a formal statement (under Section 99) arguing the legal or technical merits of the patent and rebutting the examiner’s objections;
• proposed amendments, i.e. a request to amend the patent specification, most commonly by narrowing the claims to avoid prior art or to fix clarity or support issues; or
• a combination of both submissions and amendments.

If the response resolves all objections, the patent is upheld (either as is or in its amended form). If the response is insufficient, the examiner will issue a subsequent adverse report. This is treated as a new re-examination action, starting another two-month clock. IP Australia’s guidelines caution against this becoming a “protracted debate,” hence, the pressure is on the patentee to resolve the issues expeditiously.

If a patentee proposes amendments, the examiner must first consider if the amendments are allowable (e.g., they do not add new matter). If the amendments are allowable and fixes the patentability issues, the matter is concluded. If they are allowable but fail to fix the issues, a subsequent adverse report on patentability is issued. If the amendments themselves are not allowable, a separate adverse report on the amendments will be issued, and this must be resolved before the re-examination of patentability can even continue.

Strategic Use of Re-examination

Re-examination is a strategic instrument whose value depends entirely on the perspective.

For Third Parties (Challengers)

Re-examination is a powerful and strategic tool to challenge a competitor’s patent without the immense cost, time, and public exposure of Federal Court litigation. Its ex parte nature allows a challenger to file a strong, evidence-based request.

The challenger need not engage further once the request is filed, placing the entire burden of defense onto the patentee and yet may still achieve revocation or significant narrowing of the patent.

For Patentees

As for Patentees (Responding to a Request), receiving notice of re-examination is a serious threat that demands immediate and careful response. The two-month deadline to respond is short, and a flawed response can lead directly to partial or total loss of patent rights.

A patentee can also request re-examination of their own patent. This is a sophisticated and proactive strategy. By voluntarily putting their patent through re-examination, the Patentee can address any known weaknesses (perhaps from foreign examinations) and have IP Australia formally confirm its validity. A patent that has survived re-examination is a significantly stronger asset, more resilient to future attacks, and more valuable in licensing negotiations or as a precursor to litigation.

Outcomes and Appeals

If objections raised during re-examination cannot be overcome:

• an accepted application may be refused; or
• a granted patent may be revoked, in whole or in part.

Only the patentee has a right of appeal from an adverse re-examination decision, typically to the Federal Court. A third-party requester has no appeal rights.

How can we assist?

Patent re-examination in Australia is a powerful, flexible, and often underestimated mechanism for testing and strengthening patent validity. Whether deployed as a strategic challenge or as a proactive defensive measure, it demands precise legal analysis, technical depth, and procedural discipline.

Expert guidance is essential. If you are considering initiating re-examination or responding to an adverse report, specialist advice can be decisive in protecting or reshaping valuable patent rights. Our firm stands ready to be your trusted partner, providing the expert guidance necessary to protect your commercial interests and secure your intellectual property assets at every stage of the re-examination process.

Contact us today for a free consultation.