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- if opposition proceedings against the granting of a patent have been withdrawn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.
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:
- Examination is either requested by a third party, the patent owner, or deemed necessary by us for one of the reasons listed above.
- 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.
- 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.
- 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.
- 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.
- If the problems cannot be overcome, the Commissioner will revoke the patent.
- If there are no problems, or the problems are overcome, then the re-examination will come to an end and patent protection will continue.
For help with starting a re-examination or responding to a re-examination report, you may consider speaking to an IP professional.