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Australian Patent Office Requirements for the Filing of Search Results

Amending legislation presently before the Australian parliament will substantially alter the current requirements for patent applicants to advise the Australian Patent Office of the results of prior art searches.     

The new provisions will require the filing of the results of searches carried out by other national patent offices in relation to corresponding applications, and will remove need to file the results of other kinds of searches. 

The following information is based on the Bill and on our expectations of the content of regulations which have not yet been published. We will advise our clients and associates of any changes.

When must the search results be filed?

In relation to standard patents, the search results must be filed when requesting examination or within six months of the search, whichever is the later, and the obligation will apply to searches completed up to the date of grant of the patent. 

Under transitional arrangements, the earliest date by which results must be filed is currently 1 January 2003. It is possible that this deadline will be extended in the amending regulations. 

We will be reminding clients and associates of the requirements, when forwarding correspondence relating to requests for examination, and official actions up to grant.

Where "modified" examination is requested, there is no requirement to file search results.

What documents must be filed?

In the case of a formal report such as that from the USPTO, a copy of the report. In other cases, a list of the documents cited. 

No copies of prior art documents themselves are required to be lodged, but the list must give bibliographic information sufficient to retrieve the documents.

What are the consequences of failure to comply with the requirement? 

An amendment of a patent specification will not be allowable if it would remove a ground of objection of obviousness or lack of novelty arising from the existence of information not provided.

The practical effect of this penalty will depend on the relationship between the claim structure and the damaging prior art. It may be of little significance where invalid claims can simply be ignored. 

Are currently pending applications affected?

Yes. The new requirements will apply to all standard patent applications not accepted as at 1 April 2002.

Do the provisions apply to Innovation Patents? 

Yes. Similar provisions apply to innovation patents.

We will be pleased to provide any further assistance which you may require.


1 August 2002

Patent and Trade Mark Attorneys - Intellectual Property Specialists
 Halfords IP, Level 7, 1 Market Street, Sydney, NSW, 2000, AUSTRALIA T: +61 2 9264 8388 | F: +61 2 9264 1810