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Who can challenge a patent application?

Who can challenge a patent application? 

Patents provide a 20 year statutory monopoly for new inventions.  Applications for patents are examined by IPONZ (part of MoBIE) to check they meet the legal requirements for grant.  However, third parties can challenge a patent application too.

Under the old Patent Act 1953, that in order to oppose a pending patent application, the potential opponent must have a genuine commercial interest in the area, and be likely to suffer real prejudice if a patent monopoly is granted.  In a recent case[1] it was confirmed that it is not enough for an opponent under the 1953 Act to have a commercial interest when they start the opposition – if they stop trading in the relevant technology, they may lose the ability to remain involved in the opposition to the patent.

However, the new Patents Act 2013 has changed all of this.  Now any person can oppose the grant of a patent (if they are prepared to pay the cost of doing so).  The new Act also introduces a new mechanism for challenging a pending patent application (or a granted patent) through re-examination.  If you think IPONZ has missed something during their examination process, you can bring it to their attention, pay the fee, and ask them to look over the patent application again.

Should I challenge my competition’s patent application? 

Although you no longer have to prove a likelihood of prejudice, there is seldom any point in spending time and money challenging a patent application that will never interfere with your business.  The first step should be to have a Registered Patent Attorney compare the scope of the patent monopoly applied for with what you are doing (or planning to do).  If you are not going to infringe, you are unlikely to be troubled by the patent.

If the patent is relevant to what you are doing, there may be a number of commercial solutions available.  You may be able to pay a royalty for use of the patented technology, or you may have valuable technology of your own you can cross-license, so both businesses can benefit.  Our skilled negotiators can help you make the deal, and ensure it is properly documented.

Commercial negotiations may be accompanied by consideration of available legal actions.  Whether re-examination, opposition, or revocation action is right will depend on the circumstances of your particular case, and is something you should discuss with an expert.

Challenging a patent application is now a step anyone can take – is it the right step for your business?

[1] Emeny v Quinspread Technologies Ltd [2015] NZIPOPAT 19

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