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Law Council of Australia

Business Law Section

Estoppel and Appeals from Patent Office Decisions

The Intellectual Property Committee of the Business Law Section of the Law Council of Australia (IPC) is pleased to provide this note to IP Australia in response to its request for comment on the issue of estoppel arising in relation to appeals from Patent Office decisions.

Before the amendments made by the Intellectual Property Law Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act), the question in a pre-grant opposition proceeding before the Commissioner and on appeal to the Federal Court was whether it was “practically certain” that a patent granted on an unopposed application would be invalid.1 By contrast, post-grant revocation proceedings under section 138 were (and still are) determined to the civil standard: the balance of probabilities.2

In Genetics Institute Inc v Kirin-Amgen Inc,3 the Full Court considered whether a finding of fact by a single judge in pre-grant opposition proceedings could ground an issue estoppel in a later revocation proceeding.4 The difference in the nature of the two proceedings was “sufficient to preclude the operation of issue estoppel principles”.5 A finding that it is not “practically certain” that the patent (if granted) would be invalid on any particular ground is not conclusive of the question whether, on the balance of probabilities, the patent should be revoked on the same ground in later revocation proceedings.

Read the full submission below.

1 Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd (2021) 288 FCR 247, [2021] FCAFC 224 at [12] – [13] per Nicholas, Yates and O’Bryan JJ, referring to Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 at [17] and Pfizer Corporation v Commissioner of Patents (2006) 155 FCR 578, [2006] FCAFC 190 at [8].
2 Briginshaw v Briginshaw (1938) 60 CLR 336 at 361-362; see now Evidence Act 1995, s 140.
3 (1999) 92 FCR 106
4 Genetics Institute at [17] per Black CJ, Merkel and Goldberg JJ.
5 Genetics Institute at [17].


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