Sometimes it’s best to be heard

We are all familiar with the oft-trodden path in US patent prosecution that leads to an interview with the examiner. Many reasons are possible for taking this course of action.

For example, to overcome an obviousness rejection, the purpose may be to distinguish the prosecuted claims over the prior art with a combination of argument and claim amendment. Invariably the motivation is to convince an examiner that the claims are allowable. Importantly the interview provides an opportunity to make oral submissions in support of an application. The outcome is not always allowance but this “of right” procedure provides an alternative to written submissions as a means to advance prosecution.

Not all jurisdictions are the same

Australia is one jurisdiction where a US style interview with an examiner does not exist. Whilst attorneys may certainly discuss cases with examiners, generally the scope of the discussion is quite limited. Rarely would allowance be achieved unless the outstanding objections were trivial in nature. In any event, such discussions should be followed up with a written submission to ensure that the issues raised are set out in the record.

The alternative - request a hearing

Rather than interviewing the examiner, the Australian approach is somewhat more formal in nature. It is more akin to ex parte EPO Oral Proceedings. For an Australian patent applicant there is an “of right” opportunity to be heard before an application is formally refused. Following this procedure, an applicant is required to formally request a hearing. The hearing is conducted before a Delegate of the Commissioner of Patents who is required to issue a formal written decision on the application.

Hearing preparation

Upon a hearing request by the applicant, the Commissioner will determine the manner of the hearing, whether by way of written submission or by oral hearing. The latter may be in person or by other remote conferencing means. Where a matter is to be heard by way of written submission, the Commissioner will notify the applicant of the period in which the submissions must be filed, being at least 10 business days. Where a matter is to be heard by way of an oral hearing, the Commissioner will negotiate a suitable date for all parties and will give notice of the date, time and place of the hearing at least 10 business days before the hearing is to begin. Submissions should outline the technical and/or legal basis for dispute with the examiner, or provide evidence highlighting less than ideal handling of the application during examination. A hearing request fee of $600 is payable prior to the commencement of the hearing.

Conduct of the hearing

To ensure all parties are afforded natural justice, hearings performed under the Patents Act follow principles of conduct as outlined in the Australian Public Service Values and Code of Conduct. These being:

• Hearing officers are expected to both comply with and have knowledge of all legislation relevant to the proceedings and the decision.
• Factors deemed irrelevant to the matter requiring a decision must be ignored and only relevant evidence and arguments be considered.
• Hearings are held publicly, and submissions from a party are recorded and made available to other parties to ensure transparency of proceedings.
• Decisions must be reasonable, fair, just and transparent and are expected to be issued within 13 weeks from the date of the hearing.
• All parties are expected to be treated with dignity, respect and courtesy.

The decision

During an oral hearing, the hearing officer will generally engage with an attorney so as to ensure a thorough understanding of the issues, the claim scope and evidence. Negotiating allowability of claims is certainly possible.

On completion of the hearing, a hearing officer is required to issue a published written decision. The written decision is provided in two sections being:

• the decision section covering a summary of all relevant matters on which a decision has been reached as well as any directions regarding the application
  
• the reasons for decision section covering a detailed breakdown of how the decision was reached.

Once issued, an appeal to the Federal Court of the Commissioner’s decision may be filed within 21 days. In ex parte proceedings, the Commissioner is named as the respondent, and is required to submit all relevant documentation for the appeal to the court within 14 days from being served the notice of appeal. The appeal proceedings are more akin to a rehearing, where the Court assumes the position of the Commissioner and makes a decision on the same issue that was presented to the Commissioner, based upon the evidence submitted to the Court.

For decisions relating to patent term extension applications, an appeal may also be filed with the Administrative Appeals Tribunal.

Summary of hearing outcomes

We have reviewed all decisions issued in the period January 2014 to August 2020. A summary of the decisions is set out below:

	Successful*	Unsuccessful*	Leave to amend*	Total
All ex parte hearings	23	60	19	102
Manner of manufacture (patentable subject matter)	8	42	9	59
All other objections*	11	11	10	32
Patent Term Extension	4	7	0	11
Average number exam reports	2.5	1.95

*Successful: application accepted (allowed)
*Unsuccessful: application refused
*Leave to amend: applicant permitted to amend claims post hearing
*All other objections: includes novelty, inventive step, support

Analysis of hearing outcomes

Most notable is the high proportion of patentable subject matter cases (71%) that are unsuccessful. Of these, 93% relate to computer implemented and business methods applications.

By contrast, where outstanding objections relate to matters such as novelty, inventive step and support, 66% of cases are successful. Therefore, if an applicant is faced with an objection of this type that cannot be overcome in the examination process, our analysis suggests that it would be beneficial to pursue the application further by requesting a hearing.

A more detailed example of a case that was successful at hearing in overcoming an inventive step objection is the following: Aqseptence Group Pty Ltd [2019] APO 49 (31 October 2019).

Conclusion

Although requesting a hearing involves a greater degree of formality as compared with a US style examiner interview, based on our analysis there are circumstances where the likelihood of success is justification for proceeding in this way.