Raising the (Patent) Bar: the fine points of detail


Our News Alert of 17 April 2012 advised that the Raising the Bar Bill had received Royal Assent and the amendments to the Patents Act will come into force on 15 April 2013. Two exposure drafts of the supporting Patents Regulations have been released, and are likely to be implemented in that form.

A number of significant changes affecting patent applications are on the horizon. These changes apply only to new applications filed on or after 15 April 2013, and pending applications for which examination has not been requested by that date.

Direction to request examination
The Commissioner’s power to issue a Direction to Request Examination is unchanged. However, the period by which examination must now be requested following a Commissioner’s direction, however, has been shortened to 2 months (from the current 6 month period). An application will lapse if examination is not requested by the deadline.

Acceptance (allowance) of applications
Under the amended Regulations, applications must be accepted allowed within 12 months of the date of the first examination report, with no extensions available. Applications for which examination is requested before 15 April 2013 will benefit from the present 21 month acceptance period.

Preliminary and supplementary searches
The Australian Patent Office will have the power to ‘force’ an official search of applications (filed on or after 15 April 2013). That is, these searches are additional to the regular examination procedure. Two such types of additional search will be available to the Patent Office: (i) a preliminary search and written opinion (i.e., conducted before regular examination is requested by the applicant), and (ii) a supplementary search after examination has been requested. Applicants will be able to request a preliminary search/opinion themselves if they wish.

The proposed official fees for a Patent Office-initiated preliminary search and a supplementary search are $2,200 and $1,710, respectively. Compare this with the usual applicant-requested examination fee of $490.

We believe the Patent Office’s intention is to initiate a preliminary search where the application claims domestic priority (or no priority) – in effect being directed at applicants who are Australian residents or nationals.

The Patent Office supplementary search probably will be invoked for Convention and non-Convention (but not PCT national phase) applications where the Australian Patent Office is unable to rely on the existing work product of another Patent Office. Effectively, the cost of examination is being increased four-fold in the case where there is not already a foreign search/examination report to rely on.

Australian national phase entry
PCT applications entering the Australian national phase will undergo a formalities examination. The formalities requirements are lodgement of: (i) a statement of entitlement, and (ii) a certificate of verification of translation, if applicable. The statement of entitlement must recite the chain/devolution of title from the inventors to the applicant, and how the applicant is entitled to rely on any priority applications. The certificate of verification of translation is required only if the PCT application is not published in English.

When a formalities report is issued, a period of 2 months is given to satisfy the requirements else the application will lapse. A national phase application cannot be amended or examined until the formalities examination has successfully been passed.

Direct national filings are already the subject of such a formalities examination.

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