In my earlier article, I looked at the various options for prospective opponents under the New Zealand Patents Act 2013 (the ‘New Act’). These options include third party assertions of prior art during examination, pre-grant opposition, post-grant revocation and re-examination. These options are available to opponents against all complete applications, national phase entries and convention applications filed on or after 13 September 2014.
For my earlier article, refer to:
New Zealand Patent Oppositions – New and Improved (New Act Cases)
This article looks at the options available to opponents of applications filed under the Patents Act 1953 (the ‘Old Act’). This includes all complete applications, national phase entries and convention applications filed before 13 September 2014, including applications divided from Old Act applications.
Local novelty still applies
Old Act cases remain subject to local novelty. This does not change, whether the Old Act case is considered under pre-grant opposition, post-grant revocation or re-examination, or revocation before a court.
Pre-grant opposition for Old Act applications
Pre-grant opposition for Old Act applications falls under the Old Act.
Under the Old Act, opponents are hamstrung by having to prove that the invention is obvious and clearly does not involve any inventive step. The effect of the word clearly and the principle of giving the benefit of any doubt to applicants means that opponents have a heavy burden to prove that an invention is obvious in order to succeed under pre-grant opposition. The burden is higher than that applied by a New Zealand court in a revocation action.
As it will take some time for the Old Act applications to filter through the system to grant, this problem for opponents will continue to exist for some time.
Post-grant revocation may be the better option!
Applications which have been granted under the Old Act may also be subject to post-grant revocation under the New Act. The prior art base remains the same i.e. local novelty. However, the grounds available under post-grant revocation are less restrictive, e.g. the obviousness ground no longer requires the opponent to prove the invention is ‘clearly’ obvious. Furthermore, the benefit of the doubt no longer goes to the patentee. The New Zealand Patent Office instead must decide ‘on the balance of probabilities’. This means that parties seeking post-grant revocation under the New Act will no longer be subject to the heavy burden faced by opponents in pre-grant opposition. The chance of success is greatly improved!
What does this mean for prospective opponents?
Prospective opponents can therefore decide:
whether to oppose an Old Act application under the Old Act and be subject to the heavy burden of proof; or
whether to allow an application to proceed to grant and then file an application for post-grant revocation.
As explained above, if the opponent waits and requests post-grant revocation, it will have a lighter burden of proof and therefore may be more likely to succeed. It is expected that there will be no time limitation for post-grant revocation actions.
The downside of waiting until after grant for post-grant revocation is that the patent will be granted and the patentee can bring an infringement action in a court even where a post-grant revocation action is pending. So if there is a prospect of infringement by the opponent during the course of the post-grant revocation then the opponent should consider other options such as pre-grant opposition or re-examination.
Are third party assertions available for Old Act applications?
Theoretically at least, third party assertions during examination are not available for Old Act applications. While it is likely that examiners examining Old Act cases might take such prior art into account, applications are not published until acceptance so the actual content and claims of the application may not be known.
Is re-examination available under the Old Act?
Re-examination of an accepted (allowed) application is not permitted. Re-examination of a granted patent is available. The grounds are the same as for opposition or post-grant revocation, with the limitation to local novelty but with the lighter burden of proof.