Public Interest No Longer Routinely Considered When Patent Proceedings Withdrawn
IPONZ has updated its patents hearings practice in the event that the opponent / applicant for revocation withdraws the opposition / revocation.
Oppositions or revocation actions can be withdrawn by the instituting party any time after their filing up until the appointed Assistant Commissioner issues their decision. Up until the change of practice when the opponent or applicant for revocation withdrew after filing prior art documents an Assistant Commissioner would still issue a decision in the public interest that considered the relevance of the prior art documents to the relevant application / patent. The UK Patents Appeal Tribunal case General Motors Corporation (Turney & Barr’s) Application  RPC 659 is usually cited in support of that practice, although as noted in that case the practice of the application / patent being considered in the public interest after the instituting party withdraws goes back to the early 1900’s.
Going forward, where an opposition or revocation action, whether under the Patents Act 2013 or the Patents Act 1953, is withdrawn the Hearings Office will close off the opposition and IPONZ will incorporate any amendments proposed by the patent applicant into the application. As previously noted, amendments proposed by the patent applicant / patentee during proceedings must be made unconditionally as otherwise there would be too much uncertainty for third parties and any risk with proposing amendments belongs with the patent applicant / patentee.
While prior art filed during a subsequently withdrawn opposition or revocation action will no longer be routinely considered in the public interest, the Commissioner retains discretion to either direct the application / patent to be re-examined or require an Assistant Commissioner to make a decision in the public interest. If that discretion is not exercised, then the patent application will proceed to grant.
Author: Quinn Miller