Tuesday, February 22 2022   \  Published by SPRUSON & FERGUSON.

Options and Strategies for Challenging the Validity of Standard Patent Rights in Australia

There are a variety of reasons why it may be important to challenge patent rights. One of the most common reasons is freedom to operate – in other words, to clear the way for a third party’s own commercial activity. Patent rights can be challenged on a wide range of grounds throughout the life of a patent, but not all the grounds are available at each stage of a patent’s life cycle, and therefore it is useful to know what options are available and the advantages and disadvantages that come along with each of those options.

The most appropriate course of action to challenge the validity of a standard patent will depend on a variety of factors, such as: the commercial objectives, the appetite for risk, the costs which are likely to be incurred, and of course the specifics of the challenge and which grounds lend themselves to those specific issues. For example, the grounds relating to entitlement or secret use can only be examined during opposition proceedings before the patent office, or revocation proceedings before a Court. Additionally, there are strategic considerations. For example, it can be important to coordinate challenges in different jurisdictions, and therefore the timing of these challenges can also affect which option to pursue. However, this needs to be balanced against the grounds available and the ability to intervene in the proceedings. Read more

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