Examination, Opposition, Revocation, Infringement and Defences
Examination and grant
After filing, the applicant must request substantive examination or modified substantive examination within the prescribed period. MyIPO examines for patentability, clarity, support and unity. If compliant, the patent is granted and published. There is a post-grant opposition period, currently two months from publication of the grant, in which any person may oppose on specified grounds.
Revocation and infringement
Revocation is by the court, or by the Registrar in limited cases. Grounds include lack of patentability, insufficiency, added matter and fraud. Infringement requires doing a patented act without consent: making, disposing, offering to dispose, using, importing or keeping for disposal or use. Defences include non-infringement, invalidity, private non-commercial use, experimental use, prior user rights, and use for medicines under a Bolar-type exemption.
Worked example
A competitor launches a product that falls within claim 1 but argues the patent is invalid for obviousness over a prior art document. In infringement proceedings, the court will consider validity as a defence. If the prior art is close and the difference is a routine workshop modification, the patent may be revoked. If the difference solves a technical prejudice, validity may survive.
Traps
- Missing the opposition deadline of two months.
- Confusing revocation by the court with opposition before the Registrar.
- Assuming experimental use covers commercial testing.
- Forgetting that prior user rights are limited.