Introduction to patent revocation

In legal proceedings involving the alleged infringement of a patent, it’s common for the respondent to go on the offensive and attempt to convince the Court that the said patent is invalid.  If proven, it necessarily follows there can be no infringement.  There is no one section of the Patents Act 1990 (Cth) (Patents Act) that specifically deals with invalidity.  In effect invalidity is established by proving that the requirements of validity set out in section 18 of the Patents Act are not made out on the patent in question, or that there are other grounds (such as sections 40 and 138) which the patent does not comply with.

What is the concept of invalidity?

Invalid is the opposite of valid, and denotes a patent that does not conform to the requirements to be accepted as a patent.  ‘Invalidity’ is the word used to describe proceedings that are commenced (often by way of cross-claim) seeking to have a patent revoked on the basis that it does not conform to the requirements for a patentable invention as required by the Patents Act, and therefore should never have been granted in the first place.  In essence, if a patent is invalid, it will be held to never have been valid (similar to void ab initio – void from the beginning).

What grounds are available for alleging invalidity?

The following grounds exist to those seeking to revoke both innovation and standard patents, with sections cited referring to the respective sections of the Patents Act

  • lack of novelty (section 7(1) and section 18)(Lack of Novelty);
  • lack of inventive step (section 7(1) and section 18)(standard patent) (Inventive Step);
  • lack of innovative step (section 7(1) and section 18)(innovation patent)(Innovative Step);
  • the invention is not useful (section 18(1)(c)) (Usefulness);
  • the invention was secretly used in the patent area before the priority date of the claim (section 18(1)(d));(Secret Use);
  • is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies (section 18(1)(a)) (Manner of Manufacture);
  • other grounds for invalidity:
    • patent obtained by fraud, false suggestion or misrepresentation (section 138(3)(d));(Fraud, False Suggestion or Misrepresentation);
    • the patent specification does not provide sufficient information and instruction for a person skilled in the field that the patent relates to be able to perform the teaching of the patent and produce an invention falling within the claims of the patent (section 40(2)(a))(Sufficiency);
    • failure to disclose the best method known to the patent applicant of performing the invention (section 40(2)(aa)) (Best Method); and
    • the claim or claims must be clear and succinct and supported by matter disclosed in the specification (section 40(3))(Fair Basis).

There are of course other more technical grounds for revocation which may be assessed on a case by case basis.  The above however are the generally accepted categories.

What is Lack of Novelty?

For a patent to be granted, the invention claimed must be “novel” in light of the information of the day (referred to as the prior art and the common general knowledge).  Therefore, if it is that a patent, when viewed against the prior art and common general knowledge does not disclose an invention that is novel, it cannot be said to have the required characteristic of novelty.  This has been embodied in sections 7 and 18 of the Patents Act.  The test used to determine whether or not a patented invention lacks novelty is the ‘reverse infringement test’, and postulates that if a prior art item takes all the essential integers of the claimed invention, then the claimed invention cannot be novel (Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]).

What is an Inventive Step?

For a standard patent to be granted, the invention that is claimed must be inventive when compared to the information of the day.  To be inventive, the invention claimed must contain an inventive step that would not have been obvious to the skilled person.  This has been embodied in sections 7 and 18 of the Patents Act.  The test used to determine whether or not a patent contains an inventive step is whether the invention would have been obvious to the skilled addressee in the light of the common general knowledge when considered together with the information brought in under section 7(3) (AstraZeneca AB v Apotex Pty Ltd; AstraZeneca AB v Watson Pharma Pty Ltd; AstraZeneca AB v Ascent Pharma Pty Ltd [2015] HCA 30 at [18]).

What is an Innovative Step?

For an innovation patent to be granted, the invention claimed must disclose an innovative step when compared to the information of the day.  To be innovative, the invention claimed must differentiate itself from the information of the day in a way that makes a substantial contribution to the working of the invention (although note that the test is the negative of this statement, per section 7(4)). It has to be noted (for example, Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179 at [173]) that innovative step is a different and lower threshold requirement than the inventive step.  The test used to determine innovative step is to compare the invention as claimed with the prior art to identify the differences and determine whether the differences make a substantial contribution to the working of the invention (Multisteps Pty Ltd v Source & Sell Pty Ltd [2013] FCA 743, at [276]).

What is Usefulness?

For any type of patent to be granted, the invention claimed must be useful.  To be useful is often discussed in terms of ‘utility’ (the opposite being ‘inutility’), which has been referred to as the ability of the invention to fulfil the promise of the patent, such adaptation being useful (adapted from Lindley LJ in Fawcett v Homan (1896) 13 RPC 398 at 405).  The test used to determine whether or not something is useful (within the meaning of section 18) is (Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29 said at [121]):

  • what is the promise of the invention derived from the whole of the specification?; and
  • by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?

What is Secret Use?

For any type of patent to be granted, the invention claimed must not have been used prior to the patent application.  As Diplock LJ said in Bristol-Myers Co v Beecham Group Ltd [1974] AC 646 at 680-681:

 If the inventor had already reaped commercial benefit from a de facto monopoly in his discovery owing to his concealment from all other traders of the way in which the new substance could be made, he was not to be permitted to prolong his monopoly for an additional 14 years (being the time period for the relevant patent).

What is a Manner of Manufacture?

A patent can only be obtained in relation to an invention which is a method of manufacture within the meaning of section 6 of the Statute of Monolopies.  While what is a method of manufacture is a continually developing concept (as technology develops), it is generally accepted that it includes any “thing” made, any means or process for making something or any other process producing an effect useful to the public (Northern Territory v Collins [2008] HCA 49 at [18]).

What is Fraud, False Suggestion or Misrepresentation?

A patent may be revoked if a material inducing factor to its granting (or the granting of an amendment) was based on a fraud, false statement or misrepresentation.  This can take the form of a number of acts, including intentionally misleading statements, calculated omissions, or accidental statements which are untrue.  Relevant circumstances include the conduct of the patentee in dealings with the Patent Office and the claims made in the patent as to what it can achieve.  The test is whether or not the fraud, false suggestion or misrepresentation materially contributed to the Commissioner’s decision to grant the patent (Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197).

What is the Sufficiency ground for revocation?

A patent may be revoked if it does not sufficiently instruct a skilled person to achieve the invention claimed in the patent.  The test is whether or not the specification enables a skilled address to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8).

What is Fair Basis ground for revocation?

The invention claimed in a patent must be fairly based on the patent specification; the claims must not seek to claim beyond what the specification discloses. The test for fair basis was set out in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at [95]:

…the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.

What is Best Method ground for revocation?

A patent grants a right of monopoly to exploit an invention on the basis that after the term of the patent, others can use the teachings of the patent themselves. A patent is required to specify the best method known of performing the claimed invention to ensure good faith on the part of the patentee.  The “best method” of performing an invention is the best example of the invention known to the applicant at the relevant time, where “best” means what is best in practice and not in theory (C Van Der Lely NV v Ruston’s Engineering Co Ltd [1993] RPC 45 at [56]).

Takeaways

It’s usual for us to encounter in a patent revocation matter a general concern that ‘this has been done before’ or ‘the patent doesn’t work’.  These are indicia of factors to be taken into account when considering the various grounds of invalidity.  Many of the grounds for revocation involve complex analysis at a legal and technical level (within the field of the invention described in the patent).  Ultimately, it will be the Court that decides whether or not a patent is liable to be revoked with the assistance of evidence adduced by the parties.  If you believe that are grounds for a patent to be revoked, you should seek legal advice about how to achieve your goal as the evidential requirements can be onerous.

Legislation

Patents Act 1990 (Cth)

Case law

Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29

AstraZeneca AB v Apotex Pty Ltd; AstraZeneca AB v Watson Pharma Pty Ltd; AstraZeneca AB v Ascent Pharma Pty Ltd [2015] HCA 30

Bristol-Myers Co v Beecham Group Ltd [1974] AC 646

C Van Der Lely NV v Ruston’s Engineering Co Ltd [1993] RPC 45

Fawcett v Homan (1896) 13 RPC 398

Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8

Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19

Multisteps Pty Ltd v Source & Sell Pty Ltd [2013] FCA 743

Northern Territory v Collins [2008] HCA 49

Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197

Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179

Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79

Related articles by Dundas Lawyers

Take care when alleging patent infringement 

Assistance with patent revocation

If you need assistance with patent litigation and in particular revocation, please telephone me for an obligation free and confidential discussion.

 Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS. 
Legal Practice Director
Telephone: (07) 3221 0013 | Mobile: 0419 726 535
e: mburrows@dundaslawyers.com.au


Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

Dundas Lawyers
Street Address Suite 12, Level 9, 320 Adelaide Street Brisbane QLD 4001

Tel: 07 3221 0013

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