Patents

Patent Re-Examination Requests

Highly skilled and qualified patent attorneys, offering expert advice to individuals and businesses regarding patent prosecution and defence.

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What Is A Patent Re-Examination Request?

In the context of Australian patent law, re-examination serves as a mechanism to contest the validity of an already granted patent (or certified innovation patent).

You may request re-examination against another’s patent or receive one regarding your issued patent.

Any individual has the right to initiate re-examination proceedings at any point after the granting (or certification) of a patent by submitting a formal request to IP Australia.

Grounds upon a re-examination request may be made include:

- An assertion that the invention does not meet the criteria for patentability
- Claims that the invention lacks novelty and/or an inventive (or innovative) step
- Concerns over an invention's lack of utility (usefulness)
- The claims made in the patent are not supported by the accompanying description
- The invention is not disclosed clearly and completely enough
- That the best method for carrying out the invention is not shown
- That the claims are not clear and succinct

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The Patent Re-Examination Process

To request re-examination, a formal request must be filed with IP Australia. The request must make clear the grounds on which the patent is to be re-examined and include documents and/or appropriate evidence in support of these.

Once received, IP Australia’s patent examination officers will re-examine the patent in light of the evidence filed.

Following this, a report is prepared which is then shared with the patent holder and should any issues be raised, they will be allowed to address these. The parties requesting the re-examination are not permitted to influence this process at all, although the results of any re-examination can be monitored online.

Where a patent is upheld, further requests for re-examination are permitted and revocation may also be sought through the Federal Court System.
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Can I Respond To Or Make A Re-Examination Request Without Help?

If your patent rights are being threatened either through a re-examination request seeking to invalidate them or due to a patent being granted that infringes on yours, it is best to seek professional help.

The process for re-examination is complex and any errors in paperwork or lack of proper evidence could see the re-examination request being unsuccessful.

No matter which side of re-examination you find yourself on, it is essential to invest in qualified legal advice. This will help you to avoid common mistakes and ensure that a robust argument is made in your favour.

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How A Patent Attorney Can Help

Highly skilled and experienced in all aspects of patent legislation, a patent attorney is best placed to navigate the challenges of patent re-examination requests.

Able to decipher complex legal terms, determine the best course of action and gather the most suitable evidence, they are more likely to achieve your hoped-for outcome.

Recognising the value of your patent and the intellectual property it protects, a patent attorney supports you in retaining these rights while reducing the stress associated with these requests.
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IP Guardian - Dedicated Patent Attorneys

Backed by decades of combined experience, IP Guardian’s highly qualified patent attorneys provide unmatched support and advice regarding every aspect of patent law, including patent re-examination requests.

Our wide range of patent-oriented services has successfully helped many Australian innovators to secure their patents, protect their rights and defend against misuse.

Whether you need support prosecuting a patent, submitting or responding to a re-examination request or challenging infringement, our team can do it all.

Committed to providing affordable and accessible legal advice to all Australians, we offer zero compromises on quality of service and promise to pursue optimal outcomes. Trusted leaders in patent law, we’re here to simplify and streamline the patent process and expertly deal with any complications.
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