Revisiting Merits Review of Patent Application, Grant and Validity Decisions under the Patents Act 1990 (Cth)

Abstract

This article reviews the reports from 1935 to the present addressing administrative and judicial decision making about Patents Act 1990 (Cth) patents. In particular the article addresses the review of examination (and modified examination), opposition, re-examination and revocation (including as a cross-claim to infringement) decisions under the Act and whether the Commissioner of Patents' decisions should be subject to "merits review" by a generalist administrative tribunal. The article concludes that the role of the Federal Court in dealing with revocation as a cross-claim to infringement proceedings (exercising judicial powers) needs to be resolved. However, considerable potential to minimise the cost, complexity, timeliness, and uncertainty of outcomes of patent decisions exists in changes to the Commissioner's practices in examining patent applications and the statutory framework for reconsidering the Commissioner's decisions.