IP Regulations - Schedule 1
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Preliminary search and opinion (PSO)
Items , , ,  - Patents regulations 3.14B, 22.2(2)(d), 22.2B(1)(a) and item 236A of schedule 7
The initial proposal in the draft regulations was to conduct a PSO on patent applications, with exceptions. The exceptions were PCT; Convention and divisional applications; and applications that had been subject to a search under an Article 15(5) search. The PSO would attract a fee of $2200.
A PSO would provide early information on the likelihood of a patent being granted when no other early search was likely to become available. This information could benefit the applicant. It would also benefit any competitor looking to determine their freedom to operate.
However, some stakeholders considered the new PSO would unfairly burden Australian Small and Medium Enterprises (SMEs). This was likely to affect some Australian SMEs seeking to commercialise their invention only in Australia. In this case, they were more likely to be subject to the PSO fee.
In light of stakeholders concerns, implementation of mandatory PSO will not proceed at this stage.
IP Australia still considers that the policy objective of providing early information to the public is desirable. However, IP Australia recognises that this needs further consideration.
Applicants will still be able to request voluntarily a PSO for $2200. Applicants will no longer be able to request searches under Article 15(5) for complete applications.
Items , ,  - Patents regulations item 206 of schedule 7
The search fee is intended to create a fee structure that reflects the amount of original work done by IP Australia and the reliance on work done by other offices. It was proposed that a $1710 search fee would apply where a full search of the invention was required at examination. This was the same as the $2200 fee proposed for the PSO and currently charged for international search and preliminary opinion, less the $490 examination fee. The fee would be payable if there was no quality search available on which to base examination.
Stakeholders raised concerns about the impact this fee would have on those small businesses who file applications only in Australia. In light of this, IP Australia has reduced the fee by $310 to $1400.
The intention is to apply the search fee to complete applications where there is no search available at examination. For example, it would apply to: non-Convention, non-PCT, non-Divisional applications; or Convention applications where no search is available from another office at examination; or divisional applications where a new invention is claimed. Currently, IP Australia charges $2200 for a search and preliminary examination of a PCT application. IP Australia will notify the applicant when the fee is payable.
We will provide further guidance closer to the commencement date on implementation of the search fee.
Item  - Patents regulations 3.12, 3.13
The Raising the Bar Act amended section 43. Section 43 will require a priority document to disclose the invention in a manner that is clear enough and complete enough for a person skilled in the art to perform the invention. The draft regulations have also been amended to replace the old ‘fair basis’ test with the 'clear enough and complete enough' test. This is consistent with section 43.
Some stakeholders queried why the 'fair basis' test was not replaced with a 'support' test for priority. The suggested ‘support’ test reflected a similar to change in subsection 40(3) of the Patents Act.
IP Australia does not propose changing the draft regulations to introduce a 'support' test. Adding a further 'support' test beyond the test set out in the Act would raise the requirement further than is necessary.
Various provisions in schedule 1
Stakeholders expressed concern that some changes in the draft did not give correct effect to the intended policy. They also identified some other errors. These include the following examples:
- a typographical error in regulation 3.13A(2)(c)(i);
- that reference should be made to ‘missing elements’ as well as ‘missing parts’ in regulation 10.2A; and
- that regulation 10.3(1) in schedule 1 incorrectly included requirements that cannot apply to provisional applications.
IP Australia proposes to correct these and other technical errors identified by stakeholders in the final draft of the regulations.
Last Updated: 18/1/2013