|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
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
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.
HALFORD & CO
1 August 2002