Lessons from Australian patent opposition trends in 2023

8 minute read  17.03.2024 Gus Lightowlers, Eliza Campain

This article provides insights into the trends that emerged from a review of the Australian patent opposition decisions for 2023, with key implications for opposition strategy.


Key takeouts


  • The opposition process provides an effective means for challenging the validity of an Australian patent application. Approximately one third of patent oppositions in 2023 resulted in the application either not proceeding to grant, or proceeding to grant in an amended form.
  • Inventive step had by far the highest success rate in 2023 when compared to the other grounds of invalidity.
  • Opponents should consider engaging an independent expert and having that expert undertake a hypothetical task to improve prospects on inventive step.

Patent oppositions in Australia involve an opposition to the grant of a patent application. For standard patent applications, a third party can oppose grant in the three month window between 'acceptance' and 'grant'.

Patent oppositions provide a cost-effective mechanism to challenge the validity of an Australian patent application. Despite this, and unlike in other jurisdictions such as Europe, the Australian patent opposition process is notoriously underutilised, particularly by businesses outside Australia, with less than 2% of accepted Australian patent applications being opposed. This article examines the trends emerging from a review of Australian patent opposition decisions for 2023, with important strategic lessons for oppositions.

Top technology fields

The 2023 opposition proceedings were dominated by patents for inventions in the mining technology, general engineering, food technology, materials and medical technology sectors.

1. Outcome of oppositions

The following data provides insights into the outcomes of each opposed patent application. The results demonstrate whether the patent opposition was 'successful', 'partly successful' or 'completely unsuccessful'.

'Successful' denotes a complete refusal of the patent application. This means that IP Australia ultimately determined that the claimed invention was invalid, and no amendment to the claims could rectify this issue.

'Partly successful' denotes that some claims of the patent application were found to be invalid. An opportunity was afforded to the Applicant to amend the claims to address the invalidity issue, with the application then likely proceeding to grant in an amended form.

'Completely unsuccessful' denotes that all of the claims of the patent application were found to be valid. The patent application then proceeds to grant and is enforceable.

Two interesting trends emerge from the data. Firstly, a significant proportion (65%) of patent oppositions were 'completely unsuccessful'. Some might say that this outcome validates IP Australia's decision to accept a patent application.

Secondly, it was rare for an opponent to achieve complete success in a patent opposition. Out of the twenty two substantive patent oppositions in 2023, only two were completely 'successful' for the opponent. This equates to just 9% of proceedings. MinterEllison represented one of the two completely 'successful' opponents in 2023.

It is important to note that the simplistic interpretation of the 'success rate' overlooks a crucial factor. The opponent may consider partial success (e.g. invalidating certain claims and not others) to be a 'successful' outcome. This is because in a practical sense, the amendment proposed by the applicant to overcome a validity issue may narrow the applicant's monopoly in a manner that allows the opponent to navigate the granted patent from an infringement perspective.

With this in mind, the genuine 'success rate' for oppositions is likely closer to 35%.

2. Grounds of invalidity

We considered the grounds of invalidity pressed and observed those that proved successful. The table below provides the results for the 22 oppositions for which IP Australia issued a decision in 2023, ordered by the number (frequency) of each ground of invalidity.

Grounds of invalidity Frequency*
Success**
  Number Proportion Number Proportion
Inventive step 21 95.5 6 27.3
Novelty 13 56.5 2 15.4
Support 12 52.2 1 8.3
Clarity 12 52.2 0 0
Manner of manufacture  9 39.1 1 11.1
Utility  9 39.1 0 0
Best method  5 21.7 1 20

 

* How often the opponent pressed the ground. The table accounts for the grounds which were pressed at the hearing and not those initially pleaded in the Opponent's Statement of Grounds and Particulars.

** How often the delegate finds the ground to be made out with respect to one or more claims.

Several insights can be taken from these results. Firstly, opponents generally adopt a 'throw the kitchen sink' approach to challenging the validity of a patent application. Opponents should consider narrowing the grounds of invalidity and focussing on the grounds that have a reasonable prospect of success.

Secondly, the grounds most commonly raised during opposition hearings were inventive step and novelty, which was pressed in more than 95% and 56% of hearings, respectively. The widespread use of these grounds aligns with the notion that the opposition process serves as a mechanism to highlight to IP Australia prior art that might have been overlooked, along with providing details of the common general knowledge at the priority date, which requires evidence from an expert in the technical field. It is interesting to observe that in 2023 the success rate for inventive step was significantly higher than novelty. This indicates that, where appropriate, IP Australia is willing to accept that a claim is invalid for lack of inventive step without the benefit of cross-examination from experts in the field.

Thirdly, while support and sufficiency were also frequently asserted grounds, both exhibited a low success rate. This is somewhat surprising. If support or sufficiency are important grounds of invalidity, it would be useful for opponents to map out the submissions early in the proceeding to ensure that appropriate evidence is obtained (if possible) to support the submissions.

3. Expert evidence

Typically, opposing evidence carries more weight when presented by an independent expert, as opposed to an expert associated with either party. The following table provides information on the independence of the experts engaged by opponents in relation to each of the 22 oppositions, with the number of experts per opposition ranging from one to three.

In patent opposition proceedings, both parties have the option to task the retained expert with a 'hypothetical task' to assist with inventive step evidence. This involves the legal team presenting an expert with a problem and asking the expert to solve that problem using only the information that was common general knowledge in their field at the priority date of the subject patent. If the problem is common general knowledge, and the solution to the hypothetical task falls within the scope of the opposed claims, this helps to demonstrate the claimed invention lacks an inventive step in light of common general knowledge. The table below also provides insights on the number of experts retained by the opponent that completed a 'hypothetical task'.

Opposed application status as at February 2024 Successful' oppositions n = 2 Partly successful' oppositions n = 5 Completely unsuccessful' oppositions n = 15 Total
Total number of experts engaged by opponents (n) 2 5 27 31
Number of independent experts engaged by opponents (n) 1 2 14 17
Proportion of independent experts engaged by opponents (%) 50 40 51.9 54.8
Number of experts engaged by opponents who completed hypothetical task (n) 2 0 4 6
Number of experts engaged by opponents who completed hypothetical task (n) 2 0 4 6
Proportion of experts engaged by opponents who completed hypothetical task (%) 100 0 14.8 19.4

'Successful' oppositions

For the two completely 'successful' oppositions, one featured an opponent with an independent expert, while the other did not engage an independent expert (MinterEllison ran the opposition that included the independent expert). Both experts engaged by the opponents in these oppositions completed a hypothetical task.

It was interesting to observe that a claimed invention could be found to lack an inventive step in light of common general knowledge (as demonstrated by the hypothetical task) when an opponent did not engage an independent expert for this purpose. Upon closer analysis of the decision, it was evident that in this opposition, the opponent succeeded on the ground of novelty and inventive step necessarily followed. In other words, the evidence obtained from the hypothetical task was not determinative. Had it been, the opponent's inventive step position may have failed. This is because, in general, establishing a case for inventive step when deploying a hypothetical task benefits from the involvement of an independent expert, whereas succeeding on the ground of novelty typically does not necessitate such an expert.

'Partly successful' oppositions

Among the five 'partly successful' oppositions, a total of five experts were engaged by the opponents, with only two experts being independent. Interestingly, four of the five 'partly successful' oppositions were successful for lack of inventive step, despite only two opponents engaging an independent expert. In each of the proceedings where the opponents succeeded on inventive step without retaining an independent expert, the corresponding applicants failed to capitalise on this position. In each instance, the applicant either also refrained from engaging an independent expert or neglected to submit any evidence at all.

'Completely unsuccessful' oppositions

Among the 15 'completely unsuccessful' oppositions, the opponents collectively engaged a total of 27 experts. Within this pool of experts, only 14 were independent, and four conducted a hypothetical task. It is not surprising that so many oppositions were completely unsuccessful where the opponent did not engage an independent expert. A reason for this may be the increased costs associated with properly engaging such an expert. Opponents, in particular, should strongly consider engaging an independent expert to improve their prospects.

It is noteworthy that most opponents appeared to not deploy a hypothetical task when preparing inventive step evidence. Relevant factors are likely to include complexity, cost and the skill of the legal team required to obtain this evidence in a manner that is useful for the Commissioner. It was also interesting to observe the mixed success associated with the use of a hypothetical task in 2023. In light of this, we will provide a follow-up article that analyses each of the relevant oppositions.

Leveraging Australian patent oppositions

The patent opposition process provides an effective avenue for challenging the validity of an Australian patent application. Approximately one third of patent oppositions resulted in either the application not proceeding to grant or proceeding to grant in an amended form. Given this, it is surprising that more applications are not challenged in Australia (as they are in other jurisdictions). International corporates should consider leveraging the Australian patent opposition process to assess the validity of a patent family that presents an infringement risk. Intelligence on the vulnerability of the patent family and strategy of the competitor can be obtained through this process.


MinterEllison has a specialist patent opposition practice. If you require assistance with an active opposition, or would like to discuss the potential benefits of the Australian patent opposition process, please feel free to reach out.

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