Understanding Patent Revocation in Australia

The Australian patent system incorporates several effective mechanisms for revoking a granted patent. This process, known as patent revocation, is a crucial tool for ensuring that the patent register only contains inventions that genuinely meet the stringent requirements of patentability. Because a granted patent confers a powerful statutory monopoly capable of affecting competition, innovation, and market access, Australian law treats patent validity as a matter of public interest, not merely a private dispute between commercial actors.

Revocation proceedings therefore operate as an essential corrective tool, allowing invalid or improperly granted patents to be removed from the register and restoring competitive balance.

Who Holds the Right to seek Revocation?

A key feature of the Australian patent system is its open-ended approach to who can initiate revocation proceedings in court. Under Section 138 of the Patents Act 1990 (Cth), any person can apply to a prescribed court, most commonly the Federal Court of Australia, for an order revoking a patent.

This deliberately open standing reflects a public policy position that the validity of a granted monopoly is a matter of public interest. Since a patent can impact competition and innovation, it is in the public’s interest to ensure that such rights are not improperly granted or maintained. Patents impose restrictions on the public at large, and their validity is not confined to disputes between the patentee and competitors. A revocation application may therefore be brought by:

• A direct competitor
• A party accused of infringement
• A potential market entrant seeking freedom to operate
• An individual or entity with knowledge of invalidating prior art

The Applicant does not need to demonstrate commercial damage or a proprietary interest. It is sufficient that the applicant can establish one or more statutory grounds of invalidity on the balance of probabilities.

Special Position of Innovation Patents

This open-standing provision, however, has an important caveat for innovation patents. As stipulated in Section 138(1A) of the Patents Act 1990 (Cth), a person cannot apply for a court order to revoke an innovation patent unless the patent has first been examined and certified by the Commissioner of Patents. This prerequisite ensures that the validity of an innovation patent has been substantively assessed before it becomes the subject of court litigation. Accordingly, while standing remains broad, procedural preconditions must be satisfied before revocation proceedings can be validly instituted.

Grounds for Patent Revocation

A patent can only be revoked on specific grounds laid out in the Australian Patents Act 1990 (Cth). The burden of proof rests with the party seeking revocation and must be discharged on the balance of probabilities.

The primary grounds for court-ordered revocation are detailed in Section 138(3) of the Patents Act 1990 (Cth).

Not a Patentable Invention

One of the most frequently relied upon grounds is that the invention is not a patentable invention. This encompasses several core requirements of Australian patent law, including that the invention:

• Lacks novelty, because it was disclosed in prior art available before the priority date;
• Lacks an inventive step, because it would have been obvious to a person skilled in the relevant art having regard to the common general knowledge and relevant prior art;
• Lacks utility, meaning it does not work as described; or
• Is not a manner of manufacture, and therefore falls outside patent-eligible subject matter.

These grounds often require detailed expert evidence addressing the state of the art at the priority date and the technical contribution, if any, made by the claimed invention.

Lack of Entitlement

A patent may be revoked if the patentee was not entitled to the grant. This may arise where:

• The patentee is not the true inventor;
• The patent was not derived from the inventor; or
• The chain of title is defective due to missing or invalid assignments.

Entitlement disputes are highly fact-specific and frequently involve contemporaneous records, employment agreements, and contractual arrangements governing invention ownership.

Fraud, False Suggestion, or Misrepresentation

A patent is also vulnerable to revocation if it was obtained by fraud, false suggestion, or misrepresentation. This ground captures conduct where the patentee knowingly provided false or misleading information during prosecution; concealed material prior art; or secured amendments through deceptive conduct.

This ground underscores the duty of candour inherent in dealings with IP Australia and reflects the seriousness with which Australian courts treat integrity of the patent system.

Non-Compliance with Section 40

The patent specification itself can also render a patent invalid if it fails to meet the requirements of Section 40 of the Patents Act 1990 (Cth). A patent may be revoked where:

• The invention is not described clearly and completely enough for it to be performed by a skilled person without undue burden;
• The best method known to the applicant has not been disclosed; or
• The claims are not supported by the description or are unclear or over-broad.

Section 40 challenges often turn on whether the scope of the claims is justified by the technical teaching actually provided.

Failure to meet public demand

Beyond these core grounds, the Act provides for revocation in other specific circumstances. Under Section 134 of the Patents Act 1990 (Cth), an interested person may apply to the Federal Court to revoke a patent if a compulsory license has been previously granted and the patentee continues to fail to meet the reasonable requirements of the public in Australia. This ground underscores the principle that a patent monopoly comes with a responsibility to exploit the invention for the public benefit.

Pathways to Patent Revocation in Australia

While court proceedings are the most common route for a third party to seek revocation, the Patents Act 1990 (Cth) provides several distinct pathways by which a patent’s grant or acceptance can be undone. Understanding these different mechanisms is key to developing a comprehensive IP strategy.

Applications and Counterclaims

The primary method for challenging a patent is by applying to the Federal Court under Section 138. Furthermore, Section 121 of the Patents Act 1990 (Cth) explicitly provides that a defendant in an infringement proceeding may apply by way of counterclaim for the revocation of the patent. This is a powerful defensive tool, transforming an infringement suit into a direct challenge on the patent’s validity. If the counterclaim is successful and the patent is revoked, it is treated as if it never existed, providing a complete defense to the allegation of infringement.

Commissioner-Initiated Actions

Revocation may also occur administratively. The Commissioner of Patents holds the power to revoke a patent or its acceptance under certain conditions. Under Section 101 of the Patents Act 1990 (Cth), the Commissioner can revoke a patent following a post-grant re-examination. If, during re-examination, the Commissioner finds a lawful ground of objection and the patentee fails to amend the specification to overcome the objection after being given a reasonable opportunity, the Commissioner may revoke the patent. This provides an administrative alternative to costly court litigation for challenging a patent’s validity. Even before a patent is granted, Section 50A of the Patents Act 1990 (Cth) allows the Commissioner to revoke the acceptance of a patent application if it is found that it should not have been accepted in the first place, effectively returning the application to examination.

Patentee-Initiated Actions

Revocation is not always an adversarial process. A patentee may decide for strategic or commercial reasons that they no longer wish to maintain their patent. Section 137 of the Patents Act 1990 (Cth) allows a patentee to offer to surrender his/her patent. After notifying interested parties, the Commissioner may accept the offer and revoke the patent. This provides a formal mechanism for a patentee to relinquish their rights voluntarily. Surrender may be used strategically where a patent no longer aligns with commercial objectives or poses regulatory or competition risks.

Patents of Addition

The revocation framework also includes specific provisions for a special class of patents known as “patents of addition.” These are granted for improvements or modifications to a “main invention” for which a patent is already held by the same patentee. Under Section 82 of the Patents Act 1990 (Cth), a patentee who holds an independent patent for such an improvement can apply to the Commissioner to revoke that independent patent and instead grant a patent of addition. This can be strategically advantageous for aligning patent terms and renewal fee payments.

Conversely, Section 85 of the Patents Act 1990 (Cth) addresses what happens when the main patent is revoked. In such a case, the patent of addition is not automatically revoked. Instead, it becomes an independent patent for the remainder of the term of the revoked main patent, unless a court or the Commissioner orders otherwise. This ensures that a valid patent for an improvement is not lost simply because the original patent on which it was based has been revoked.

Why work with us?

Patent revocation is a central mechanism within Australian patent law, balancing private monopoly rights against public interest considerations. The statutory framework provides multiple, carefully calibrated pathways for challenging patent validity, each with distinct procedural and strategic implications.

Whether you are a patentee facing a challenge, a business seeking freedom to operate, or an innovator navigating the complexities of the patent landscape, it is crucial to have expert legal advice. Our team of experienced patent attorneys and lawyers possesses a deep understanding of the intricacies of all aspects of patent revocation in Australia. We are committed to providing our clients with the highest quality strategic advice and representation, helping you achieve your commercial objectives and ensuring your intellectual property rights are effectively managed and protected.

If you are considering challenging the validity of an Australian patent, or are defending against a revocation application, contact us today for a free consultation.