The growing trend of Delegate-raised invalidity grounds in Australian patent oppositions

A concerning new trend is emerging in Australian patent opposition proceedings, whereby Delegates of the Commissioner are increasingly invoking their discretion to raise grounds of opposition not raised by the parties themselves. While this is well within the power of the Delegates, it can lead to unexpected costs and prolonged proceedings for the parties and, for these reasons, should be invoked only rarely and with care, lest the benefit be outweighed by the cost.

The relevant provisions

Under section 60(3) of the Patents Act 1990 (Cth), the Commissioner may, in deciding an opposition, "take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not". Delegates of the Commissioner in opposition proceedings are distinct from the Examiner of the relevant applications, so they may raise issues as a result of their consideration that were not raised during examination.

While this approach can provide the Patent Office with a further opportunity to ventilate invalidity grounds, which is arguably in the interests of the public, it also imposes a burden on the parties that is often not imposed until the eleventh hour of proceedings.

Recent invocations of s 60(3)

Since January 2024, s 60(3) has been invoked in at least 13 oppositions, representing about 14% of all opposition proceedings during that period. Compared with the preceding seven-year period from 2016 to 2023, when s 60(3) was invoked in about 2% of opposition proceedings, this represents a significant (approximately seven-fold) increase in Delegates raising their own grounds of opposition.

The grounds of opposition available to opponents and Delegates include:

• 

  Section 60(3) Kat

  external validity grounds, such as patentable subject matter, novelty, inventive step and utility;
• internal validity grounds, such as sufficiency, support, clarity and best method; and
• entitlement.

In recent examples, Delegates have raised grounds of invalidity in each of categories (a) and (b) above, with category (c), not surprisingly, being confined to contests between the parties.

How successful are these grounds?

A review of the decisions over the past decade in which s 60(3) was invoked reveals that in over 90% of cases, the Delegate raised new grounds of opposition at or after the hearing when considering the submissions of the parties in detail for the first time. While the grounds raised by the Delegate were made out in about 73% of cases, they were only determinative of the outcome of the opposition in about 44% of those cases (or about 32% overall).

However, these proportions may be misleading. When a ground was raised under s 60(3), the parties were given a relatively short time to make submissions in response (often 2 weeks, although there was little consistency in both the timing and sequence of the parties' submissions). In the context of opposition timeframes, this is a relatively short period in which to address a ground raised for the first time, and is typically not conducive to obtaining further expert evidence where required (not to mention the significant additional cost this would involve).

Therefore, the outcomes may well have been different if the parties had the opportunity to address these grounds in the ordinary course of the opposition and adduce additional expert evidence (if necessary).

Just because you can, doesn't mean you should

While Delegates can raise their own grounds of opposition in the public interest, opposition proceedings are fundamentally inter partes proceedings. The onus rests on the opponent – not the Delegate – to establish, on the balance of probabilities, that the patent application is invalid. When Delegates raise new grounds at or after the hearing, the parties may be significantly disadvantaged by the imposition of short timeframes and additional costs in addressing those grounds. In these circumstances, the parties also may not be able to adduce further evidence or have a further opportunity to be heard on the new grounds. In this regard, one Delegate stated (see EnviroLogix Inc v Ionian Technologies, Inc [2020] APO 18):

The Commissioner has the power under s 60(3) to take into account additional grounds and it is prima facie apparent to me that [certain prior art documents] would be prejudicial to the novelty and inventive step of [certain claims]. I will nevertheless refrain from making a decision on these grounds, as the parties have not been afforded sufficient opportunity to adduce evidence addressing these grounds.

This level of pragmatism is welcome, and it is unclear why there has been a recent rise in Delegates invoking s 60(3). It could be due to the majority of oppositions now proceeding under the Raising the Bar law, which requires a higher standard of scrutiny of patent applications. However, this should not be taken as an invitation for Delegates to routinely search for additional grounds beyond those raised by the opponent, and principles of procedural fairness should be taken into account.

Where to next?

If the current trend continues, it may be prudent to extend the period between the filing of written submissions by the parties and the hearing (currently 10 business days for the opponent and 5 business days for the applicant) to allow enough time for the Delegate to consider the submissions in detail before the hearing and raise any grounds under s 60(3) in good time before the hearing. Alternatively, rather than acting as a pseudo-party in opposition proceedings, re-examination may be a more appropriate mechanism for the Commissioner to raise new validity issues after acceptance.