Patent opposition decisions in Australia may have three results: refusal of the opposed application, dismissal of the opposition and allowance subject to amendment.
The last situation is the most common in practice and acceptability of the amendment in resolving the opposition is decided in a final determination. Less common is an opposition to amendment which, generally, has low prospects for success.
An ”interim” decision on the opposition, made by a Hearing Officer at the Patents Office of IP Australia, outlines the timeframe, typically 2 or 3 months, allowed for amendment at the very end. What is best practice for the amendment step?
There may be a temptation to read the interim decision narrowly and propose a “minimal” amendment in response to the interim decision. Such an approach has pros and cons. Excessive narrowing of the claims is undesirable because the opposition has presumably been filed to address a freedom to operate issue. It does not make sense for the applicant to make an infringement case more difficult to establish.
The counter to this is that the scope of an amendment is often contentious and opponents will wish to see significant narrowing of the claims when receiving a favourable interim decision. An opponent, in this situation, will not hesitate to make the submission that an amendment is unresponsive to the opposition decision. What happens then, especially as for some years now, filing a divisional application during an opposition has not been an available strategy?
In these situations, the Hearing Officer – who decides the opposition – has the discretion to decide whether an amendment is responsive to the opposition decision in a final determination. A risk taken by an applicant taking a minimal approach to amendment is that it will be seen as nonresponsive and this will need to be rebutted in a further hearing, likely to be on the papers under Australian practice.
The discretion on acceptability of an amendment to resolve an opposition currently appears to be exercised beneficially to the applicant. An example is the recent Patent Office decision in Phoenix Contact GmbH & Co KG v Pivot Electronics Pty Ltd  APO 16 (29 March 2021) (“Phoenix”). The subject matter of the patent is not especially relevant. Suffice to say that the applicant combined two claims (claims 1 and 3), each of which had been found to lack an inventive step.
Whilst the interim decision had not addressed claim 3 in detail, a broad finding of lack of inventive step had been made. However, it could be inferred – from reasoning in the previous decision – that amended claim 1 would lack an inventive step. On inference, explanation of an interim decision appears to be acceptable practice at the Patents Office. However, it carries some risk that – if subjected to judicial review – the decision could be challenged as being made after the Hearing Officer’s decision making power is exhausted on making of an interim decision, i.e. ultra vires. However, Hearing Officers typically take care here and a judicial review will rarely be worth seeking as it is unlikely that the substantive ground of invalidity will be addressed in a judicial review proceeding. An appeal would, subject to business case, be the better approach – though noting the time limit from the date of the interim decision for filing such an appeal.
In Phoenix, on the matter of whether the applicant had made a genuine attempt to address the findings of the interim decision, the Hearing Officer found that it had been made. However, the applicant’s attempt was characterised as “misconceived” and it may be that this is a borderline case. In another decision, Ipsen Pharma S.A.S v Allergan, Inc  APO 50 (29 August 2013), the applicant had not made a genuine attempt to address findings in the interim decision and there did not appear to be any patentable subject matter in the application. That application was refused.
On amendment strategy, a business decision needs to be made. If the application is not crucial to the business IP strategy, taking a cautious approach to amendment is recommended. That is, it may be better, for example, to base the amendment on an allowable claim or on a feature not addressed at all in the interim decision. Opponents are at a disadvantage here because the opposition process does not allow forecasting of amendments, let alone “out of left field” amendments, based on the description as opposed to the claims.
An opponent may complain but if the findings of the interim decision are addressed, the opponent will fail, a result that could in itself be prejudicial in a future infringement proceeding. In a more important case, it may be worth taking the risk of a minimalist amendment but clear submissions supporting allowability of the amendment need to be made. Those submissions cannot run contrary to the interim decision. If a case is sufficiently important and findings in the interim decision need to be contested, and noting the Patent Office approach of giving interim decisions a wide construction, an appeal is likely the better course to adopt.
For opponents, there is a comment option during amendment proceedings and advantage can be taken of that. Where there is arguable subject matter, it may be better not to contest the amendment (other than in simple terms) and appeal may also be the better option. A business decision needs to be made.