Inherent disclosure and novelty in patent re-examination: Alza Corporation [2012] APO 70


Like most patent offices, the Australian Patent Office is not well placed to reject patent claims in

examination proceedings for lack of novelty based on inherent disclosure. Of concern are those

claims that contain functional limitations that are not clearly read from a prior art document, and that

require laboratory testing of the prior art to establish whether the relevant limitation is disclosed. So

what opportunity is there to have a patent revoked based on inherent disclosure in post grant reexamination

proceedings where the only information that can be considered is a prior art

document? According to this decision: a significant opportunity!

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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