When it comes to infringement actions, two dates are of
particular importance: date of publication and date of grant. Where
a competitor files an application in respect of subject matter that
you are, or may be, already using, and there is a risk that you
will be infringing the patent if granted, you may seek to defeat,
or at least delay, the application. In either case, you will need
to pay close attention to these two dates.
Patent infringement lawsuits can only be filed after grant of
the patent in question. However, pursuant to Article 35bis of the
Patent Act, damages for infringement may, in certain circumstances,
be calculated from the date the application was published in the
Patent Gazette. Article 35bis provides that a patentee will be
entitled to damages in respect of an infringing act carried out
after the date of publication of the application, provided the
infringer was, at the time, aware of the application.
The current procedural framework that regulates patent
oppositions allows pre-grant opposition proceedings. Any third
party is allowed to file an opposition within a period of 90 days
after publication of the application. Several grounds, either alone
or combined, can be used as the basis of an opposition including
lack of novelty or inventive step, non-patentable subject matter,
or the applicant's entitlement to file the application and be
granted a patent in Thailand. Often, the 90 day period allowed for
filing an opposition, will already have expired before a decision
to oppose has been taken. In that case, although it is not possible
to file a formal opposition, it is possible to notify the Examiner,
informally, of any relevant prior art or any Office Actions that
have been taken in relation to the priority or corresponding
applications. Although the Examiner is not obliged to consider such
notifications, in practice, most Examiners will do so.
Normally it takes years for oppositions to be considered;
meanwhile, examination of the application and grant of the patent
Apart from delaying grant, successful opposition proceedings
will, of course, ensure that the application does not proceed to
grant, thus removing the risk of future infringement.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Discussion of the Federal Court decision in RPL Central Pty Ltd ("RPL") v Commissioner of Patents  FCA 871.
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