Re-examination happens when the validity of a granted patent or certified innovation patent is challenged. This re-examination will be carried out with the addition of new evidence which may inform the examiner’s decision.

Reasons for re-examination

The most common reason for re-examination to be requested by a third party is that the requestor believes the invention claimed in the patent is not novel and/or inventive, or not innovative for an innovation patent.

Other reasons for re-examination can come from a belief that:

  • the invention is not something that can be patented
  • the invention has been used in public before the patent was filed
  • the patent specification does not provide enough detail to build or perform the invention
  • the claimed invention is not consistent with the description
  • the claims are so unclear that it is not possible for a skilled person to understand them
  • the invention is a biological process for generation of human beings (such as human cloning).

We may also decide it is necessary to re-examine a patent without it being requested by a third party. Reasons for this may include:

  • if new prior art is found during an internal quality review
  • if opposition proceedings against the granting of a patent have been withdrawn
  • if a third party files material disputing the validity of a patent without requesting re-examination.

It is also possible for a patent owner to request re-examination of their own patent or for a court to order it.

Requesting re-examination

You can request re-examination of a granted patent through online services. You’ll need to pay a re-examination fee.

You’ll need to include your reasoning behind why you believe the patent needs to be re-examined. You should also include any documents that support your argument.

If a similar patent or documentation exists

If you’re relying on documentation to support your belief, you’ll need to provide a copy of the documents and explain how the documents support your belief.

If you’re requesting re-examination based on non-patent information or documentation, you will need to provide evidence to show that it was publically available before the priority date of the patent.

If you’ve seen a similar product on the market

If you’re requesting re-examination based on the use of a product, you will need to provide evidence to show the nature of the product, and that it was used publicly before the priority date. Examples of documentation may include a product catalogue.

When a patent can be re-examined

If you are requesting the re-examination of a standard patent, you can only make the request after it has been granted. A request to re-examine an innovation patent can only be made after it has been certified.

We can decide we need to re-examine a patent without it being requested by a third party at any time:

  • after the acceptance of a standard patent or
  • after the certification of an innovation patent.

The re-examination process

The process of re-examination involves the following steps:

  1. Examination is either requested by a third party, the patent owner, or deemed necessary by us for one of the reasons listed above.
  2. We will ask the patentee to confirm that there are no current court proceedings involving the patent. We also provide the patent holder with a copy of the re-examination request and any supporting documentation.
  3. A re-examination report will be sent to the patent holder and the person who requested the re-examination. This report will either explain why we believe the patent is still valid or why we believe it is invalid.
  4. If we find the patent to be invalid, the patent holder can then file a response to try and overcome any issues outlined in the re-examination report. The response may include proposed amendments to the patent specification.
  5. Additional re-examination reports may be issued, taking into account the submissions or amendments. If any problems can’t be overcome, the Commissioner will provide an opportunity for the patent holder to attend a hearing before deciding on further action.
  6. If the problems cannot be overcome, the Commissioner will revoke the patent.
  7. If there are no problems, or the problems are overcome, then the re-examination will come to an end and patent protection will continue.

Professional help

For help with starting a re-examination or responding to a re-examination report, you may consider speaking to an IP professional.

Last updated: 
30 May 2016