Official notices: Patents 2002

Patents	Dave Herald	Phone 02 6283 2324
Designs	Victor Portelli	Phone 02 6283 2093
Trade marks	Joanne Rush	Phone 02 6283 2972
General	Jodi Lawler	Phone 02 6283 2681

Telephone enquiries	Phone 1300 651 010 or (02) 6283 2999
Facsimile	Phone 02 6283 7999
E-mail	assist@ipaustralia.gov.au
Correspondence	PO Box 200 Woden ACT 2606

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Official Notice
Amendment to the form for requesting an Extension of Term of a Patent (s.70)

17 November 2002

The Commissioner has become aware of a number of instances where:

• a request for an extension of term of one patent is received, based on a particular ARTG registration. Prima facie the substance of the ARTG registration is covered by the patent, and the extension accepted.
• subsequently (a couple of months later) a request is received from the same agent, for the extension of term of a different (narrower) patent based on the same ARTG registration. In this second application arguments/evidence are presented that the substance actually registered on the ARTG is not exactly what is shown on the ARTG, but some particular form of the substance.

It is highly desirable for all concerned that the Commissioner processes requests for the extension of term of a patent in full knowledge of all relevant circumstances. To that end, the form for requesting an extension of term has been modified to require the patentee to identify any other patents known to them where an extension will be sought on the basis of the same registration in the Australian Register of Therapeutic Goods. The form now includes the following – one of which will always need to be checked:

• The best of the patentee's knowledge, the ARTG registration will not be relied upon to support the extension of term of another patent; or
• The ARTG registration relied upon in support of this extension of term will also be relied on to support the extension of term of patent no. _____________

The Commissioner is particularly mindful that if the relevant patents are all owned by the same company, the information should be readily available. On the other hand, the Commissioner does not expect patentees to ascertain what competitor companies might be planning. Accordingly, the first option is 'to the best of the patentee's knowledge....'

Enquiries

D Herald 02 6283 2324
Deputy Commissioner
(Oppositions Hearings & Legislation)

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Official Notice
Provision of search results – s.45(3) of the Patents Act 1990
Time for providing the search results
Amendment of Regulation 3.17A(2)(c)

7 November 2002

Under the current regime for provision of search results in respect of applications for standard patents, the earliest date that s.45(3) must be complied with is 1 January 2003. [See s.45(3) and Reg 3.17A(1)(c)]

On 27 June 2002, the Intellectual Property Laws Amendment Bill 2002 was introduced into Parliament. Inter alia, the Bill limits the types of searches for which search results must be disclosed, to searches conducted by foreign patent offices.

On the basis that the Bill passes through Parliament and becomes law, it is the Government's desire that the more onerous requirements of the present s.45(3) provision are, in effect, completely superseded by the provisions in the Bill. To that end, the date set under current reg 3.17A(1)(c) needs to be a date after the date of commencement of the new provisions (should they come into law.)

This notice is to advise users that Regulation 3.17A(2)(c) has now been amended to specify 1 June 2003 as the earliest date by which the current s.45(3) provisions must be complied with. [Patents Amendment Regulations 2002 (No. 3) – Statutory Rules 2002 No. 263]. The regulations are expected to be gazetted on 6 November 2002.

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Official Notice
PCT Preliminary Examination before the
Australian Patent Office
Time to Respond to Opinions

7 November 2002

The past practice of the Australian Patent Office has been to set the time for responding to the first International Preliminary Examination Opinion at two months after the date of the Opinion. Importantly, if a response is not filed in that time, the Office will proceed to establish the Report - unless the applicant requests an extension of time to respond to the Opinion.

The practice of the Patent Office with regard to when the Report is established has now changed. While the Office will continue to set a two-month period to respond to the first Opinion, it will not proceed to establish the Report before the earlier of:

• Filing a response to the opinion
• One month before the 'Final Date' set under the PCT for establishing the report.

Opinions issued by IPEA/AU now include, in the part providing advice on the time for responding to the Opinion, text consistent with the above practice.

Consequences of the change in practice

As a consequence of this change in practice, applicants will no longer need to seek an extension of time to respond to the first Opinion. In the absence of a response, the Report will not be established until one month before the 'Final Date'. Any response and/or amendments received before the Report is established will be taken into account when establishing the Report.

However, practitioners should note that if the applicant wishes to receive a further opinion (in the event that the Report will be a negative report), they will need to ensure the response to the first opinion is filed at least 3 months before the 'Final Date' for establishing the Report. Otherwise a further Opinion might not issue on the basis that inadequate time remains to consider the application.

Practitioners should also note that whilst an extension of time under R66.2(d) could in principle be sought to a date later than one month before the Final Date for establishing the report, such an extension would only be granted in extraordinary circumstances.

Application to Pending Opinions

This change of practice will also apply to all existing instances where IPEA/AU has issued a Preliminary Examination Opinion, but the Report has not yet been established. As a result, applicants need not request an extension of time under Rule 66.2(d) to respond to any pending Opinion - noting that the Office will not (in the absence of a response) proceed to establish the Report until one month before the Final Date for establishing that Report.

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Official Notice
PCT Rule Change

24 October 2002

The recent meeting of the PCT Assembly agreed to extensive changes to the PCT Rules. These changes have come about as part of a process of reforming the PCT. One of the first changes in the reform process was to change the time for national phase entry to 30 months for all applications - whether or not a Demand was filed. One of the most significant changes now made - that of establishing an Opinion at the time of issuing the ISR - arises as a consequence of that earlier change.

What follows is a practical summary of the changes that have been made, including some implications for practitioners that may not be self-evident from the rule changes. The summary has been prepared in the context of IPAustralia as a PCT Authority. Of course, for definitive information about the rule changes practitioners should refer to the Rules themselves - which may be obtained from the WIPO web site.

The rule changes fall into two categories, differing in their date of commencement:

Changes commencing on 1 Jan 2003

National Phase Entry - Extension of Time

The PCT will include a provision requiring designated offices to extend the time for national phase entry. The extension can be for a period of up to 12 months. The grounds for the extension are:

• Delay in meeting the time limit was unintentional; OR (at the option of the designated Office)
• The failure to meet the time limit occurred in spite of due care required by the circumstances having been taken.

This change will come into effect for any PCT application where the due date for national phase entry (ie the date that was missed) occurs on or after 1 Jan 2003. However there is a 'transitional reservation' provision to deal with the situation where the national law is incompatible with the new rule.

The requirements of the new rules are fully met in Australian practice by s.223 of the Patents Act, and no change in practice before IPAustralia will arise as a result of these changes. With regard to other Offices, it may be anticipated that a small number of offices will take advantage of the transitional reservation. Also it is apparent that many Offices will apply the stricter requirement of "in spite of due care", and practitioners need to be aware that this requirement may be more akin to "circumstances beyond control" than "error or omission". [Rule 49.6]

Translations of the application for Searching Authorities

A practical difficulty arises before certain PCT Searching Authorities with the language of the application. Where an application is filed in a language other than a language of publication, that application must be translated. This happens most frequently before the patent offices of Sweden and the Republic of Korea - as well as the EPO with respect to applications from the Netherlands.

Under the current rules, the International Searching Authority is responsible for establishing the translation. This has created a great burden for the affected offices. The rules are being changed to require that the applicant must provide the translation, and to include appropriate sanctions (penalty fees, and deemed withdrawal) if the applicant fails to do so.

This issue is not expected to be relevant to practitioners before IP Australia. However, if the situation did arise, the applicant will need to file a translation into English.

This issue is of great importance to the Searching Authorities concerned, and the new provisions will come into effect for new applications filed on or after 1 Jan 2003.
[Rule 12]

Changes commencing on 1 Jan 2004

Designation of All countries
A PCT application will be deemed to have been designated all countries that are party to the PCT on the date of filing the application. The Request form will not allow for the designation of selected countries. This will apply to all applications filed on or after 1 Jan.2004
[Rule 4.9(a)(i)]

A direct corollary of this is that every PCT application filed after 1 Jan. 2004 will be an Australian application. Accordingly there will be no need to allocate an Australian application number to identify those PCT applications that have designated Australia.

The application will be taken as being for every type of application (including regional patents) that are available under the PCT for each of the Designated countries. The choice of which type of protection (including more than one type of protection) will be made at the time of national phase entry. In the absence of any indication, the application will be taken as being for the grant of a standard patent. [Note. These changes do not restrict the applicant's ability to change the type of application that would otherwise be available after national phase entry.]
[Rules 4.9(a)(ii) and (iii); 49bis]

Four countries have been identified where, if :

• The priority application is made in that country; and
• The PCT application designates that country

the priority application is deemed withdrawn. Those countries are Germany, Japan, Republic of Korea, and the Russian Federation. The automatic designation of all states creates a potential problem in these countries, in that the priority application would necessarily be deemed withdrawn in that country if a PCT application were filed claiming priority from it.

The Rules include a transitional reservation mechanism that (if invoked by the country concerned) will allow applicants in such circumstances to not designate that country. In that event, the Request form will include a location to indicate the non-designation of that country.

• Germany and the Russian Federation have indicated an intention to amend their legislation to remove this problem before the PCT Rule changes come into effect. Accordingly, it is expected that the Request form will only refer to Germany, or the Russian Federation, if their legislation has not been amended in time.
• Japan, and the Republic of Korea, have indicated that they do not intend changing their legislation - at least for the foreseeable future. It is not expected that they will make the transitional reservation, and the Request form will not allow for non-designation of those countries. Accordingly PCT applicants whose application claims priority from a JP or KR application will need to decide whether to allow the priority application to lapse, or withdraw the designation of that country under Rule 90bis.2. Any withdrawal of designation will need to be effected before the date at which the priority application is deemed withdrawn.

NOTE that this issue only arises in the context of applications claiming priority from DE, JP, KR or RU applications. Accordingly, it should not be a practical issue for PCT applications filed with IP Australia.
[Rule 4.9(b)]

There will be no 'Designation fees'. Rather, the current Basic fee and Designation fee will be replaced with a single International filing fee. The whole fee will be due within 1 month of filing. If it is not paid in that time, the Receiving Office will issue an invitation to pay the fee - including a late payment fee. [Note that the option presently available in certain circumstances, to pay Designation fees at a later date, will not exist.]
[Rule 15.1; 15.4; 16bis.

It is expected that pamphlets will cease to individually identify all designated states. Rather, in the box identifying designated states, a phrase such as "all States bound by the Treaty on the international filing date of this application" is likely.

Election of All countries

A Demand for Preliminary Examination will be deemed to have been elected all designated countries. The Demand form will not allow for the election of selected countries. The possibility of 'later elections' (Rule 56) is removed. This will apply to all Demands filed on or after 1 January 2004.
[Rule 53.7]

The requirements of the Demand, vis-à-vis applicant details and signature, are the same as for the Request.
[Rule 60.1(a-bis)]

Applicant details

Under Rule 4.5, the names of each of the applicants must be identified. In the case of applications that are intended to proceed in the USA, it is essential that ALL inventors be named as inventor/applicants.
[NOTES re US National phase

• The US patent system requires the applicants be the actual inventors.
• As a general matter, a US application cannot be made by an Assignee applicant (eg. a company.) If the only applicants listed are assignee applicants, the application will be unable to enter the national phase in the US.
• For the purposes of the US national phase, the inventors should at least be identified on the request form as "applicant/inventor (US only)" - although naming them merely as "inventor" may be sufficient.
• Failing to name (or misnaming) the inventors will invalidate the US patent application, unless it was done in error and without deceptive intent.
• Accordingly, applicants should ensure that the names of ALL inventors are included on the PCT Request form. Any decision to deliberately not name inventors should only be taken after obtaining professional advice.]

A range of details has to be provided for each applicant - see rule 4.5. In the past, if those details were not provided, an Art.14 defect notice would be issued. Under the new rules, an Art.14 defect notice will not issue if the details are provided for at least ONE applicant. [However, the obligation to provide those details in the national phase - if required - remains.] [Rule 26.2bis(b); 51bis.1(vi) and (vii)]

Where the applicants want the application to proceed using a 'Common Representative', that Common Representative may only be an applicant for which all the details under Rule 4.5(a) to (c) have been provided. Similarly, where there is no appointment of Agent or Common Representative, the first applicant with those detail provided will be taken to be the Common Representative.
[Rule 90.2]

Signature requirements; Power of Attorney; Withdrawals; Assignments

The request will only need to be signed by one of the named applicants.
[Rule 26.2bis(a)]

RO's, ISA's, and IPEA's may waive the requirement for a power of attorney to be submitted to it. It may be anticipated that IPAustralia will make that waiver. This will mean that for PCT applications filed by an attorney before IPAustralia, the only signature required will be that of the attorney on the request form.
[Rule 90.4(d)]

Important
Offices are unable to waive the requirement for a Power of Attorney in respect of any withdrawals under Rule 90bis - that is, withdrawals of the application, designations, priority claim, Demands or elections. Either all applicants must sign the notice of withdrawal, or the attorney effecting the withdrawal must also provide a power of attorney signed by all applicants. Note that as all applications will necessarily designate the US, and the US will treat any named inventors as being applicants for the purpose of the US, it will be necessary to have the signatures of all named applicants AND inventors in order to effect any of these withdrawals. [For this reason (only), if at the time of filing the applicant has absolutely no intention of proceeding in the national phase in the US, it may be advisable not to list the inventors on the Request Form. However, any decision to deliberately not name the inventors should only be taken after obtaining professional advice - as that decision will prevent the application from proceeding in the US if the applicant changes their mind.]
[Rule 90bis.5]

Rule 92bis changes (such as assignments) are not per se affected by the changes to the rules - and in particular, a power of attorney will not be required as a precondition to recording a 92bis change.. However, the current practice of the International Bureau - of advising the 'old' parties of any changes, and reversing the change if they receive an objection, will be formalised in the Administrative Instructions.

It should be noted that the Rule 92bis process is designed to record 'consensual' changes. It is not designed to deal with resolution of disputes, or enforcement of equitable rights. Where the change is clearly unlikely to be consensual, IP Australia will not record changes without the clear agreement of any adversely affected party. Examples of this include: ·

• Removing the name of one or more applicants (or inventors, who are applicants because the US is designated). This is irrespective of allegations of they having been included because of a mistake. Agreement of the person being excluded is required.
• Adding another applicant (especially if requested by a different attorney). Agreement of the applicants of record is required.

Expanded International Search Report

For applications filed on or after 1 Jan 2004, the International Search Report will include an "International Search Opinion".
[Rule 43bis.1(a)]

The opinion will cover all issues that are covered under Preliminary Examination.
[Rule 43bis.1(b)].

Following the establishment of the International Search Report, the applicant will have the following options:

1. Take no further action.
The International Search Opinion will be re-issued by the International Bureau, as an "International Preliminary Examination Report on Patentability (Chapter I)" This will occur at 30 months from the priority date. Prior to that date, the opinion will be confidential.
[Rule 44bis.1]

2. Provide written comments to the International Bureau
The rules will not provide any formal mechanism for this. But the applicant may provide written comments to the IB, which will be included with the "International Preliminary Examination Report on Patentability (Chapter I)" when the International Bureau issues it. It should be noted that the applicant would bear the responsibility for ensuring that the submissions are translated as required in the national phase.

3. File a Demand for Preliminary Examination
The time for filing the Demand will be 22 months from the Priority date, or three months from the date of the ISR - whichever is the later. Demands filed after this date will be deemed not filed. [Rule 54bis]
[Note that for those countries that have not yet changed to 30 months for national phase entry, the requirement to file a Demand by the end of the 19th month in order to defer national phase entry to 30 months remains.]

The International Search Opinion is taken to be the first opinion under Preliminary Examination - irrespective of which Authority established that Opinion. While there is a reservation mechanism for this, it is not expected that any Authority will make that reservation.
[Rule 66.1bis]

As the Demand will be, in effect, a response to the first written opinion, it will be important for practitioners to ensure that amendments (or at least persuasive arguments) are filed - either with the Demand, or before the end of the time limit for filing the Demand. In the absence of amendments or arguments, the Report will be established on the basis of the International Search Opinion - without any correspondence being entered into - on the assumption that the Demand has been filed solely to obtain the benefit of 30 months national phase entry date in certain countries.

One issue that arises is the obligation of the Examining Authority to issue a further written opinion in the event that the Report will be negative. Under Rule 66.2(a) the Examining Authority must provide a first written opinion if the Report would be negative in any respect. There is no obligation to provide a further written opinion following a response [compare rule 66.4] - although the Preliminary Examination Guidelines indicate that a further opinion should be issued subject to certain matters. However, under this new regime the International Search Opinion is the first opinion under Preliminary Examination, and the obligation under Rule 66.2(a) is exhausted by way of that opinion. It would seem that some Examining Authorities may, under pressures of workload, minimise the number of opinions that are issued to the extent that there is generally no further opinion issued after the Demand is filed (i.e. the Report is established). However, IP Australia will continue to issue further opinions if the report will be adverse, so long as (i) there is time remaining and (ii) progress is occurring, or is likely.

The time limit for completing Preliminary Examination will be the later of 28 months, or 6 months from when Preliminary Examination is started. It may be expected that the 28 month date will apply generally except for offices with severe backlog problems. [Rule 69.2, 69.1]

Following completion of the preliminary examination, the Report will be communicated to elected offices after 30 months. The International Search Opinion will not be published as such, as is the case for opinions under Preliminary Examination. [Rule 73, 44ter]

Availability of the Search Opinion

• The Expanded International Search Opinion is not publicly available from the IB or the ISA before the end of 30 months.
  [Rule 44ter]
• It will be automatically communicated to Offices after 30 months, after having been converted by the International Bureau into an International Preliminary Report on Patentability (Chapter I of the PCT). However, if Preliminary Examination has occurred the opinion will not be converted to a Report. Rather the report under Preliminary Examination will be communicated to Offices after 30 months, as an International Preliminary Report on Patentability (Chapter II of the PCT).
  [Rule 44bis]
• If the applicant enters national phase early, those Offices can request a copy of the Expanded International Search Opinion following national phase entry. Public access to the Opinion is governed by the national law of the country; in Australia, it would be OPI when the application was OPI following national phase entry.

An issue here is that while the ISR and the Search File generally is publicly available following Art. 21 publication, the EISO is confidential until after 30 months. This means that the ISR and EISO must prepared and stored in such a manner that the EISO can be withheld from public availability even though the remainder of the Search file is publicly available.
[Rule 44ter, 44bis.2(b)]

Under the current regime, Demands for Preliminary Examination are almost always filed before the end of the 19th month, in order to obtain the 30-month national phase entry date - although there is in fact no limitation on when the Demand can be filed. Under the new regime, Demands will be filed well after the 19month date specified in Art.39 of the PCT. The time period mentioned in Art.39 has not been changed. Nevertheless, the incorporation of Art.34 amendments made during Preliminary examination is currently dependent upon the Demand having been filed before the period mentioned in Art 39. [see s.89(5)(b)]. Legislative amendments will be required to ensure that Art. 34 amendments are included in the Australian specification whenever Preliminary Examination has occurred - irrespective of when the Demand was filed. Until that has occurred, practitioners will need to be mindful of when the Demand was filed - so as to be able to determine whether or not any Art. 34 amendments are included in the specification.

Communication on Request

The great increase in PCT filings over the last decade has resulted in some fundamental changes in the way PCT applications are communicated to Offices. Whereas in the early days of the PCT, a paper copy of each specification was sent to each designated office, that is not now the case.

The International Bureau is currently developing a computer system that will enable Offices to selectively obtain all the documents necessary to process the application in the national phase. A number of rule changes are being made to formalise this process, and to provide the applicant with certainty in this environment about whether or not the communication under Art 20 has occurred (an issue that is important for a small number of designated offices, including the USPTO - but not IP Australia)
[Rules 47 {esp. 47.1(e)}, 61.2, 93bis]

Enquiries

For legal matters
Dave Herald, Deputy Commissioner 02 6283 2324

For PCT operational matters
Lisa Treverrow, Manager, Australian Receiving Office 02 6283 2955

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Official Notice

Patent Information in the New Patent Information in the New Supplement of the Australian Official Journal of Patents (AOJP)

12 September 2002

12 September 2002 IP Australia wishes to advise that the NEW AOJP Supplement will be published on 12 September 2002.

The first issue of this NEW Supplement will contain information on new filings from 5 July 2002. There will also be information about applications which have been withdrawn, innovation patents which have been granted, and applications which have become open for public inspection.

Other notifications will be progressively advertised in later issues of this NEW AOJP Supplement.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Changes to IP Australia's Scheduled System Maintenance Windows

12 September 2002

This Notice advises customers about changes to times for scheduled maintenance on IP Australia's computer systems. These maintenance windows apply to following systems at the following times:

Mainframe Systems

• Wednesday 7pm to 10.30pm; and
• Friday 9pm to Saturday 9am.

On-Line Services and the IP Australia website

• Thursday 6pm to 10pm; and
• Sunday 2pm to 6pm.

General System Maintenance Window

This general maintenance window may impact on any of the listed computer systems, and customers are advised to check availability of a service if access will occur immediately before the scheduled window.

• Saturday 12pm (noon) to 9pm

All maintenance windows are based in Australia Eastern Standard Time/Australian Eastern Daylight Savings Time.

Customers are advised that services may not be available during these periods. Where On-Line Services transactions are being undertaken at the time that the window commences, customers will lose their connection to the site and therefore be unable to complete the transactions.

However, these windows may not always be utilised by IP Australia, and customers are advised to check access to the site at the time of the window.

Where system maintenance is required outside of those windows, IP Australia will inform its customers as far in advance as is possible through its internet site, on the "What's New" page.

Customers may also subscribe to an e-mail notification service to be notified about unscheduled downtimes. Please contact assist@ipaustralia.gov.au to subscribe.

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Official Notice

National Phase Entry - Processing Delays

5 September 2002

12 September 2002 IP Australia wishes to advise that the NEW AOJP Supplement will be published on 12 September 2002.

The first issue of this NEW Supplement will contain information on new filings from 5 July 2002. There will also be information about applications which have been withdrawn, innovation patents which have been granted, and applications which have become open for public inspection.

Other notifications will be progressively advertised in later issues of this NEW AOJP Supplement.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

National Phase Entry - Processing Delays

5 September 2002

IP Australia wishes to inform customers that processing of requests for PCT applications designating Australia to enter the national phase will be delayed for up to six weeks from 8 August 2002.

After the introduction of the latest release of the New Patent Solution system on 5 July 2002, IP Australia has migrated records of all PCT applications which have designated Australia but which had not entered the national phase at the time of migration from the Patadmin system into the NPS system. This occurred on 8 August 2002. However, as a result, there is a large backlog of requests to enter the national phase. It is estimated that IP Australia will not be in a position to reduce this backlog until towards the end of September 2002. Therefore, customers should not expect to receive a notification of successful national phase entry until after this period.

IP Australia wishes to assure its customers that, provided all requirements have been met, this delay in processing requests will not affect the date of national phase entry of relevant applications.

IP Australia apologises for this inconvenience and is working to reduce the relevant backlog as soon as possible.

For further details, please contact Ray Hallett on 02 6283 2186.

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Official Notice

Payment of Continuation and Renewal Fees

5 September 2002

On 1 September 2002 a new schedule of fees was introduced. To clarify how the new fees will be applied to renewal fees please note the following (which applies equivalently to continuation fees):

• For a patent to be renewed, the full renewal fee for the anniversary due must be paid. For payments made after the anniversary date but within 6 months, the renewal fee includes an additional amount for each month or part thereof that the fee is paid after the anniversary. That is, if payment occurs after the anniversary, the date of payment determines the amount of the renewal fee due.
• If a renewal payment is attempted after the anniversary date, but does not include the additional amount determined by the date of payment, renewal cannot be effected. Renewal can only be effected when the full amount due is paid. When determining the amount that must subsequently be paid to effect the renewal, allowance must be made for any further months that expire between the initial attempt to pay, and the actual payment.
• If an attempt to pay a renewal fee occurs before 1 September 2002, but was not effective because of an underpayment, the balance due to effect payment after 1 September 2002 is determined by reference to the new fee schedule. Part payment before 1 September does not establish any entitlement to complete the payment under the old fee schedule.

Example

Assuming a 7th year anniversary falls due on 30 August 02:

1. The fee due on 30 August 2002 is $235

2. A payment of $200 on 30 August 2002, would not renew the patent

3. The new 7th Anniversary fee due on 2 September 02 would be $250 , plus $100 as the new additional fee for each month ((or part thereof of a six month period allowable for the fee to be paid) making a total of $350

4. Therefore the balance required to effect payment on 2 September 02 and renew the patent would be $350 - $200 = $150.

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Official Notice

Filing fees for Standard Patents and Innovation Patents

29 August 2002

Under the new fee schedule that comes into effect on 1 September 2002, the fee for filing a request accompanied by a complete specification for either an innovation patent, or a standard patent, is a reduced fee if it is filed:

"by an electronic means approved by the Commissioner for this paragraph"

- see fee items 202(a) and 203(a)

This notice is to advise that the electronic means approved by the Commissioner for the purpose of these two paragraphs is:

Filing a complete application in its entirety by the use of the on-line filing system available on the IPAustralia web site at http://www.ipaustralia.gov.au, using the file formats permitted by that system.

The file formats that are presently permitted by the system are .txt, .jpg, TIFF and pdf. For full details, see IPAustralia's Business Rules for Electronic Communication with IP Australia at:

http://www.ipaustralia.gov.au/pdfs/general/eta.pdf

Note that the system includes an option for filing part of the application on a physical medium - such as paper, or a CD-ROM. If advantage is taken of that option, the application will not have been filed in its entirety by the use of the system, and the fee reduction will not apply.

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Official Notice

Disruption of IP Australia's Services

8 August 2002

IP Australia wishes to advise its customers that access to the Patent Administration system (Patadmin) & the Patent Indexing system (Patindex) will be suspended from Thursday 8 August 2002 and over the weekend. This suspension of services is necessary to ensure data integrity when the data is copied from Patadmin to the NPS system.

While Patadmin access is suspended, no bibliographic information will be available from Patadmin. As highlighted in the previous Official Notice, other avenues for obtaining data include the Australian Official Journal of Patents (AOJP) and the CD-ROM products in the State Offices, although these may not necessarily contain the most up-to-date information in relation to particular patent applications.

From Thursday 8 August 2002 and over the weekend, when Patadmin is suspended, extensive use of the mainframe computer will occur to retrieve data to migrate into the NPS system. Users may experience a noticeable decline in response times of other IP Australia mainframe systems including TMARK, ATMOSS & DESADMIN.

IP Australia apologises for this disruption to its services.

Please refer to the IP Australia website (see 'NPS News and Updates' within the 'What's New' section) for further updates about the NPS Project. For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Patent Information in the Australian Official Journal of Patents

26 July 2002

IP Australia wishes to advise its customers that information about patent applications filed after 5 July 2002 is currently not available in the Australian Official Journal of Patents (AOJP).

The Innovation Supplement to the AOJP will contain information about these applications. Unfortunately publication of this Supplement will be delayed for some weeks due to the continuing implementation phase of Release 2.1 of the New Patent Solution.

However information about existing patent applications is available from IP Australia's website, the AOJP and the CDROM products that are available in our State Offices.

Details about when this Supplement will be published will be provided in the Official Notices of the AOJP.

IP Australia apologises for any inconvenience caused for its customers and asks for continued patience during this time.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Fee Regulations Under the Patent, Trade Marks and Designs Acts Made 4 July 2002

18 July 2002

The Intellectual Property Legislation (Fees) Amendment Regulations 2002 were made by the Governor-General on Thursday 4 July 2002.

The Regulations amend the Patents, Trade Marks and Designs Regulations to provide for changes to the amounts and structures of fees for various transactions with the Patent, Trade Marks and Designs Offices.

Preliminary information about these fees was provided to customers in Official Notices during June 2002.

The Fee Amendment Regulations will commence on 1 September 2002, and their final form is attached to this Notice

Information about transitional arrangements has been published in an additional Notice in this Journal.

Please contact assist@ipaustralia.gov.au with any inquiries.

You can download the original document in PDF format below:

Intellectual Property Legislation Amendment Regulations 2002

Official Notice

Transitional Arrangements for the Intellectual Property Legislation (Fees) Amendment Regulations 2002 (Patents)

18 July 2002

The Intellectual Property Legislation (Fees) Amendment Regulations 2002 were made by the Governor-General on Thursday 4 July 2002. The Regulations amend the Patents Regulations to provide for changes to the amounts and structures of fees for various transactions. This Notice provides customers with information about the transitional arrangements that will apply on their commencement on 1 September 2002.

As a general rule, customers are advised that the fee payable for an action will be the fee applicable on the day the action is done. If the fee is not paid or is partly paid, an Invitation to Pay will be issued based on the fee applicable on the day the action is done.

IP Australia reminds our customers that some IP rights require full payment before an action is deemed to have been done. Customers wishing to discuss individual fees or transactions should contact IP Australia to ensure that their IP rights are protected.

Continuation fees, renewal fees and national phase entry fees

Customers are reminded that actions for continuations, renewals and national phase entry are not legally done until the entire fee has been paid.

The following transitional arrangements will apply for continuation fees, renewal fees and national phase entry fees. A fee in these categories due on or after September 1 2002 but paid in full before 1 September 2002 will attract the old fee.

A fee for continuation, renewals and/or national phase entry due but only partially paid before 1 September will attract an outstanding balance up to the new fee if the balance is paid on or after 1 September. Late payment penalties may also be incurred.

Filing Fees

For standard patent applications filed on or after 1 September 2002, a flat filing fee of $320 will apply, replacing the current 'basic plus excess page' filing fee. A discounted filing fee of $290 will apply for web based electronic filing.

Acceptance Fees

The Regulations create a new acceptance fee of $140, and an additional component of $20 for each accepted claim in excess of 20 claims.

This new acceptance fee structure is only applicable to new applications filed and national phase entries made on or after 1 September 2002.

Hearings

Hearing fees remain at $500. However, any hearing that lasts more than one day will attract an additional fee of $500 for each day or part thereof in excess of the first day.

If any hearing should start before 1 September 2002 and finish afterwards no additional fee will be payable. The fees for any such hearing will be payable under the old regulations.

Please contact assist@ipaustralia.gov.au with any inquiries about the regulations or the transitional arrangements.

Customers wishing to discuss fees payable for individual transactions should contact the IP Australia Customer Support Centre on (+61) 2 6282 2999 or your nearest State Office on 1300 65 10 10.

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Official Notice

IP Australia is reviewing its Customer Service Charter

12 July 2002

IP Australia's Customer Service Charter has been in place since 1999 and is being reviewed.

To ensure the Charter is useful and relevant to our customers and stakeholders, we are undertaking an e-mail survey to find out what elements of service are most important to our customers and how we can improve our services.

Anyone interested in participating in the survey can do so by providing their e-mail address to Colleen Page, the Customer Charter Manager by Monday 22 July 2002. The survey will take place in early August, should only take about 10 minutes to complete and will help us improve our services to you. All responses will be treated confidentially.

The results of the survey and other feedback we have received from customer groups will be used to design a new Customer Service Charter, which is expected to be launched in October 2002.

To register your interest in participating in the survey please call Colleen Page, on (02) 6283 2394 or simply provide your e-mail details to colleen.page@ipaustralia.gov.au.

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Official Notice

New Patent Solution (NPS) Release 2.1 - Migration of Innovation Patent Data

11 July 2002

Migration of bibliographic data on existing innovation patents into the NPS system will begin on Friday 12 July 2002.

Data associated with PCT applications which have designated Australia will be migrated from the Patent Administration System (Patadmin) to NPS in the coming weeks.

Thereafter all requests on these applications to enter the national phase will be processed in the new NPS system and not in Patadmin.

As highlighted in previous Official Notices, access to Patadmin and NPS will need to be suspended. This suspension of services is necessary to ensure data integrity when the data is copied from Patadmin to the NPS system. Further details will be provided closer to this stage of data migration.

IP Australia apologises for any inconvenience caused for its customers and asks for continued assistance and patience during this implementation period.

IP Australia's website (see 'NPS News and Updates' within the 'What's New' section) will continue to be updated with the latest information on this implementation phase of NPS Release 2.1.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Implementatation of Release 2.1 of the New Patent Solution (NPS) Project

4 July 2002

Implementation of Release 2.1 will occur on Friday 5 July 2002.

As a result of the implementation of NPS Release 2.1 on 5 July 2002 and the subsequent migration of relevant data into the new system, a number of IP Australia's services will be disrupted over the coming weeks.

These disruptions will mainly be related to systems dealing with patent applications such as the patents e-forms, Patadmin and Patindex. However, other IP Australia systems, such as TMark, may experience reduced response times in the coming weeks.

Due to the implementation of NPS Release 2.1, there may be delays in processing customers' transactions. This delay in processing will be kept to a minimum. IP Australia wishes to assure its customers that their IP rights will not be placed in jeopardy by the delays in processing of transactions.

IP Australia's website (see 'NPS News and Updates' within the 'What's New' section) will continue to be updated with the latest information on this implementation phase of NPS Release 2.1.

IP Australia apologises for this disruption to its services.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Correction:

Changes to Statutory Fees Under the Patent, Trade Marks and Designs Acts

21 June 2002

An Official Notice regarding changes to statutory fees under the Patents, Trade Marks and Designs Acts was published in the Journal of 20 June 2002.

Due to an administrative oversight, the table of fee changes appended to the Notice showed increased fees for innovation patents when no change is proposed. The specific references are in Schedule 7 to the Patents Regulations, and should have read

Part 2, item 4A current $290, proposed $290

Part 2, items 4B(a) and (b) current $145, proposed $145

Part 2, item 7A(d) current $165, proposed $165

Part 2, item 7A(f) current $235, proposed $235.

IP Australia apologises for any inconvenience caused by this error. Corrected tables are appended to this Notice.

Regulations for the changes are currently being drafted, and the proposed changes are expected to come into force on 1 September 2002.

Please contact assist@ipaustralia.gov.au with any inquiries.

Customers are reminded that this Notice provides information about IP Australia's proposals for fee changes purely to assist customers identify the types of changes they may need to make to their fee management systems. The information should not be relied upon for any other purpose. Information about transitional arrangements will be provided in a subsequent Notice. The final form of the fee schedules will be made available to customers once the regulations have been made.

Item	Matter	Current Fee	Proposed Fee
1	On lodging an application for the registration of a design	$90	$90
2	On lodging a request for expedited consideration of an application for the registration of a design	$90	$90
3	On lodging an application under subsection 27B (2) of the Act for an extension of time on the ground specified in paragraph 27B (2) (a) of the Act — for each month, or part of a month, for which the application is made		$100
	(a) Omit paragraph
	(b) Omit paragraph
4	Omit item
5	On lodging an application under subsection 27B (2) of the Act for an extension of time on the ground specified in paragraph 27B (2) (b) of the Act	$65	$100
6	On lodging a request for extension of the period of registration:
	(a) under subsection 27A (2) of the Act — for the first extension	$55	$55
	(b) under subsection 27A (12) of the Act — for the second extension	$90	$90
	(c) under subsection 27A (13) of the Act — for the third extension	$135	$135
7	On lodging a notice of opposition under subregulation 27 (1) or 29A (1)	$500	$550
8	On lodging an application under subregulation 29 (2) or 29AA (2) for the grant of a licence	$65	$65
9	On lodging:
	(a) a request for the exercise of the Registrar’s discretionary powers; or	$500	$500
	(b) a request for a hearing	$500	$500
10	On appearing at a hearing	$500, less any amount paid under item 9 in relation to the hearing	$500 per day, or part of a day, less any amount paid under item 9 in relation to the hearing
11	For supply of a certificate by the Registrar	$15	$25
12	For supply of a duplicate certificate of registration	$65	$250
13	For supply of a copy of an extract from the register or another document	$10	$25
14	Omit item

Part 1 Patent Attorneys

Item	Matter	Current Fee	Proposed Fee
1	Applying for admission to sit for an examination conducted by the Board	$400	$400
2	Applying for grant of a supplementary examination conducted by the Board	$200	$200
3	Applying for a report of reasons for failure of an examination conducted by the Board	$200	$200
4	Applying for registration as a patent attorney	$200	$200
5	Annual registration fee payable by a patent attorney	$250	$350
6	Annual registration fee payable for combined registration as a patent attorney and trade marks attorney	$320	$450
7	Applying under regulation 20.19 or 20.19A	$160	$160

Part 2 General fees

Item	Matter	Current Fee	Proposed Fee
1	On filing a request for a patent accompanied by a provisional specification	$80	$80
2	On filing a request for an innovation patent accompanied by a complete specification:
	(a) by an electronic means approved by the Commissioner for this paragraph; or	$150	$150
	(b) for filing by another means	$180	$180
3	On filing a request for a standard patent accompanied by a complete specification:
	(a) Omit paragraph
	(b) Omit paragraph
	(c) Omit paragraph
	(a) by an electronic means approved by the Commissioner for this paragraph; or		$290
	(b) for filing by another means		$320
4.	Omit item
4	On filing a request for an examination, under section 45 of the Act, of a standard patent request and complete specification:
	(a) in the case of a PCT application — where the Patent Office has issued an international preliminary examination report in respect of that application; or		$240
	(b) in all other cases		$340
4AA	On filing a request for modified examination, under section 48 of the Act, of a standard patent request and complete specification		$240
4A	On filing a request under paragraph 101A (b) of the Act, by the patentee of an innovation patent, for examination of the complete specification relating to the innovation patent	$290	$290
4B	On filing a request under paragraph 101A (b) of the Act, by a person other than the patentee of the innovation patent, for examination of the complete specification relating to the innovation patent:
	(a) payable by the person making the request; and	$145	$145
	(b) payable by the patentee	$145	$145
5	On filing a request under subsection 44 (3) of the Act requiring the Commissioner to direct an applicant to request examination	$65	$100
6	On filing a request under subsection 97 (2) or paragraph 101G (1) (b) of the Act for re-examination of a complete specification	$1,200	$1,300
7	Continuation fee under paragraph 142 (2) (d) of the Act, or renewal fee under paragraph 143 (a) of the Act for:
	(c) the fifth anniversary	$165	$180
	(d) the sixth anniversary	$200	$200
	(e) the seventh anniversary	$235	$250
	(f) the eighth anniversary	$270	$300
	(g) the ninth anniversary	$305	$350
	(h) the tenth anniversary	$345	$400
	(i) the eleventh anniversary	$385	$450
	(j) the twelfth anniversary	$430	$500
	(k) the thirteenth anniversary	$475	$550
	(l) the fourteenth anniversary	$525	$600
	(m) the fifteenth anniversary	$575	$650
	(n) the sixteenth anniversary	$630	$700
	(o) the seventeenth anniversary	$680	$800
	(p) the eighteenth anniversary	$730	$900
	(q) the nineteenth anniversary	$790	$1000
	(r) If an extension of the term of a standard patent is granted under section 76 of the Act:	$790	$1200
	(i) the twentieth anniversary for the patent; and
	(ii) each subsequent anniversary for the patent happening during the period of extension
	plus:
	if paid within 6 months after the anniversary	in addition to any other fee payable in relation to this item — $65 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid	in addition to any other fee payable in relation to this item — $100 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid
7A	Renewal fee under paragraph 143A (d) of the Act for:
	(a) the second anniversary	$100	$100
	(b) the third anniversary	$100	$100
	(c) the fourth anniversary	$100	$100
	(d) the fifth anniversary	$165	$165
	(e) the sixth anniversary	$200	$200
	(f) the seventh anniversary	$235	$235
	plus:
	if paid within 6 months after the anniversary	in addition to any other fee payable in relation to this item — $65 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid	in addition to any other fee payable in relation to this item — $100 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid
7B	On acceptance of a patent request and complete specification under Section 49 of the Act:
	(a) acceptance; and		$140
	(b) if the number of claims contained in the specification at acceptance, exceeds 20 — for each claim in excess of 20		$20
7C	On filing an application or request under sections 17, 32 or 36 of the Act		$550
7D	On filing a request under subregulation 3.25 (1) for the certification referred to in Rule 11.3(a) of the Budapest Treaty		$550
8	On filing a notice of opposition under regulation 5.3 or 5.3AA	$500	$550
9	On filing a request under subregulation 5.5 (1) for dismissal of opposition	$65	$550
10	On filing an application under subregulation 5.10 (2) for an extension of time, for each month, or part of a month, for which the extension is sought	$65	$150
11	On making a representation to the Commissioner:
	(a) under regulation 5.3A or 5.3B or subregulation 5.9 (3) objecting to a proposed amendment; or	$500	$500
	(b) under subparagraph 5.10 (5) (c) (i) objecting to an application or proposed action	$500	$500
14	On filing an application under section 66 of the Act for a duplicate of a patent to be sealed	$65	$250
15	On filing a request for leave to amend:
	(a) a complete specification relating to an application for a standard patent before a request for examination is filed or after the complete specification is accepted; or	$105	$200
	(b) a patent request for an innovation patent to make it a patent request for a standard patent; or	$105	$140
	(c) an innovation patent: (i) after the patent is granted but before a request for examination is filed; or (ii) after the patent is certified	$105	$200
16	On filing a request under subsection 150 (1) of the Act to restore a lapsed application	$90	$100
17	Omit item
17	On filing an application for an extension of time under subsection 223 (2), on a ground specified in paragraph 223 (2) (a) of the Act, or for an extension of time under subsection 223(2A) of the Act — for each month, or part of a month, for which the application is made		$100
19	On filing an application under subsection 223 (2) of the Act for an extension of time on the ground specified in paragraph 223 (2) (b) of the Act	$65	$100
19A	Omit item
20	On filing:
	(a) a request under regulation 22.22 for the exercise of discretionary power; or	$500	$500
	(b) a request for a hearing	$500	$500
21	On appearing at a hearing	omitted
	(a) appearing; and		$500 less any amount paid under item 9, 11 or 20 in relation to the hearing
	(b) if the hearing runs for more than a day — for each day, or part of a day, after the first day		$500
22	On filing a response to the Commissioner’s report under section 45 or 48 of the Act, if filed more than 12 months, but within 21 months, after the date of the first report on the examination — for each month, or part of a month, after the 12 months, other than a month in respect of which a fee was paid under this item in relation to that examination	$65	$100
23	On requesting the supply of a copy of:
	(a) a patent specification; or	$15	$25
	(b) a document other than a patent specification; or	$10	$25
	(c) if more than 6 documents of the kind mentioned in paragraph (b) are sought from a single source and supplied at the same time	$60 plus 30 cents per page for each document in excess of 6 documents	$150 plus 30 cents per page for each document in excess of 6 documents
24	On requesting the supply of a certificate by the Commissioner	$15	$25
25	Omit item
26	Omit item
27	On filing a request under subregulation 19.2 (2) for information that requires an international-type search	$800	$1000
28	Omit item
29	On filing a substitute page or pages in compliance with a direction under subregulation 3.2A (2), if filed more than 3 months after the day when the direction was given, but before the application becomes open to public inspection		$200
	(a) Omit paragraph
	(b) Omit paragraph
30	Omit item
31	Omit item
32	On filing an application under subsection 70 (1) of the Act for the grant of an extension of the term of a standard patent	$400	$1000

Part 3 General fees for international applications

Item	Matter	Current Fee	Proposed Fee
1	Transmittal fee under Rule 14 of the PCT	$100	$100
2	Search fee under Rule 16 of the PCT	$800	$1000
3	Additional fee for search under Article 17 (3) (a) of the PCT	$800	$1000
4	Preliminary examination fee under Rule 58 of the PCT	omitted
	(a) where the international search report was issued by the Patent Office in respect of the international application; or		$550
	(b) in other cases		$1000
5	Additional fee for international preliminary examination under Article 34 (3) (a) of the PCT	$450	$550
6	For copy of a document in accordance with Rules 44.3 (b) or 71.2 (b) of the PCT	$15	$25
7	Confirmation fee under Rule 15.5 (a) of the PCT	50% of the sum of the designation fees payable under item 3 of Part 4 in this Schedule for the relevant international application	50% of the sum of the designation fees payable under item 3 of Part 4 in this Schedule for the relevant international application
8	late payment fee under Rule 16bis.2 of the PCT	the greater of: (a) 50% of the amount of the unpaid fees specified in the invitation; and (b) the amount of the transmittal fee; but not more than the amount of the basic fee	the greater of: (a) 50% of the amount of the unpaid fees specified in the invitation; and (b) the amount of the transmittal fee; but not more than the amount of the basic fee

 

Item	Matter	Current Fee	Proposed Fee
1	Filing an application to register a trade mark under subsection 27 (5) of the Act in respect of goods or services in 1 or more of the prescribed classes	omitted
	(a) by an electronic means approved by the Registrar for this paragraph; or		$120 for each class
	(b) for filing by another means		$150 for each class
2	Filing a divisional application under subsection 45 (1)	omitted
	(a) by an electronic means approved by the Registrar for this paragraph; or		$120 for each class
	(b) for filing by another means		$150 for each class
3	Filing an application to register 2 or more trade marks as a series under section 51 of the Act	omitted
	(a) by an electronic means approved by the Registrar for this paragraph; or		$170
	(b) for filing by another means		$200
4	Request for amendment under section 64 or 65 of the Act to include an additional prescribed class of goods or services in an application	$150 for each class	$150 for each class
5	Filing an application for an extension of period or time under subregulation 4.12 (3) or regulation 5.2, 5.15, 17A.20, 17A.30 or 21.25 or regulation 5.15 as applied by regulation 17A.33 — for each month or part of a month for which the extension is sought		$100
	(a) Omit paragraph
Omit item	(b) Omit paragraph
5A	Filing an application for an extension of period or time under regulation 5.2, 5.15, or 17A.30, or regulation 5.15 as applied by regulation 17A.33 — for each month or part of a month for which the extension is sought		$150
6	Filing a notice of opposition under section 52 or 96 or subsection 224 (6) of the Act or regulation 17A.29, or section 96 of the Act as applied by regulation 17A.48	$250	$250
7	Filing an application for permission to serve a copy of further evidence in opposition proceedings under paragraph 5.15 (1) (b), or under that paragraph as applied by regulation 17A.33	$100	$100
8	Single registration of a trade mark under section 68 of the Act: (a) in respect of goods or services in a single prescribed class	$300	$300
	(b) in respect of goods or services in more than 1 prescribed class	$300 plus $260 for each additional class	$300 for each class
9	Renewal of a single registration of a trade mark under section 75 of the Act: (a) in respect of goods or services in a single prescribed class	$300	$300
	(b) in respect of goods or services in more than 1 prescribed class	$300 plus $150 for each additional class	$300 for each class
	(c) as a result of a request made within 12 months after the expiry date to which section 79 of the Act refers	in addition to any fee in relation to paragraph (a) or (b) — $65 for each class and for each month, or part of a month, after the expiry date	in addition to any fee in relation to paragraph (a) or (b) — $100 for each class and for each month, or part of a month, after the expiry date
9A	Each potential renewal period requested by a person under section 80D of the Act: (a) in respect of goods or services in a single prescribed class	$300	$300
	(b) in respect of goods or services in more than 1 prescribed class	$300 plus $150 for each additional class	$300 for each class
	(c) where the request for renewal is made within 10 months after the end of the prescribed period, under paragraph 80G (1) (b) of the Act	in addition to any fee in relation to paragraph (a) or (b), but regardless of the number of potential renewal periods requested — $65 for each class and for each month, or part of a month, after the end of the prescribed period	in addition to any fee in relation to paragraph (a) or (b), but regardless of the number of potential renewal periods requested — $100 for each class and for each month, or part of a month, after the end of the prescribed period
10	Filing an application for removal of a trade mark from the Register for non-use under section 92 of the Act, or for cessation of protection for non-use under subregulation 17A.48 (1)	$150	$150
11	Request for a hearing: (a) under regulation 5.14 or 9.4, or regulation 5.14 as applied by regulation 17A.33 or regulation 9.4 as applied by regulation 17A.48, to determine an opposition (b) in relation to any other matter	$500   $300	$500   $300
12	Attendance at a hearing (a) under regulation 5.14 or 9.4, or regulation 5.14 as applied by regulation 17A.33 or regulation 9.4 as applied by regulation 17A.48, to determine an opposition	$500 less any amount paid under item 11 in relation to the hearing	$500 per day, or part of a day, less any amount paid under item 11 in relation to the hearing
	(b) in relation to any other matter	$300 less any amount paid under item 11 in relation to the hearing	$300 less any amount paid under item 11 in relation to the hearing
12A	Handling an application for the international registration of a trade mark under regulation 17A.7	$100	$100
12B	Transmitting renewal fee for the international registration of a trade mark under Article 7 of the Madrid Protocol	$65	$100
13	Request for a decision under subregulation 21.16 (2)	$300	$300
14	Omit item
15	Supply of a certificate signed by the Registrar under section 211 of the Act	$15 for each certificate	$25 for each certificate
16	Supply of a copy of an extract from the Register or the Record of International Registrations or another document	$10	$25
17	Supply of a copy of a document for which a search is required	$65	$100
18	Filing an application for linked applications to be considered as a single application under subsection 243 (3) of the Act	$100	$100
19	Applying for admission to sit for an examination conducted by the Board	$400	$400
20	Applying for grant of a supplementary examination conducted by the Board	$200	$200
21	A report of reasons for failure of an examination conducted by the Board	$200	$200
22	Applying for registration as a trade marks attorney	$150	$150
23	Annual registration fee payable by a trade marks attorney	$150	$250
24	Annual registration fee payable for combined registration as a trade marks attorney and patent attorney	$320	$450
25	Applying under regulation 20.8 or 20.9	$160	$160

 

PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS

Individual Fees under Article 8(7) to be communicated to the International Bureau

 

Item	Current (AU$)	Proposed (AU$)
Designation fee (in the international application or in a subsequent designation): – for the first class of goods or services – for each additional class	$450 $410	$450 $450
Renewal fee: – for the first class of goods or services – for each additional class	$300 $150	$300 $300

Official Notice

May 2002 Examiners Manual Amendments

13 June 2002

In May 2002 amendments were made to the Manual of Practice and Procedure Volume 1 - International.

The changes relate to:

• Treatment of omnibus claims for grouping purposes in an ISR (1.10.15)
• Deletion of need to type "Refer to Electronic Database" in "Minimum documentation searched" box on ISR's (1.11.29, Part 1 Annex B.7)
• Clarification for citing ISR documents where A & B level publications of the same document are required (1.11.32 (g), 1.11.32.2)
• Changes to the form PCT/ISA/220 to reflect the new National Phase entry dates (Part 1 Annexes A.1 and B.1)
• Supervisor to give written concurrence, or otherwise, for search refunds (Part 1 Annex S.3)
• All references to Belated 15(5) Searches deleted and time limit for 15(5) request changed from 3 to 10 months (1.1.9, 2.1.4, Part 2 Annex C.1, chapter 4.4 deleted completely) and how to treat 15(5) requests past 10 months (2.1.4)
• Claim groupings in ISR not automatically transferable to IPE (3.5.6.1, 3.4.5)
• Deleting the requirement to mention omnibus claim defects in IPE Opinions/Reports (3.5.8.1)
• Clarification on handling additional Singapore correspondence from examiner (4.5.1)
• A charge now applies to Thai searches for both residents and non-residents (4.2.1)
• Singapore family equivalents for E & P documents to be cited in Box V of examination report and Novelty indication put in Box IV (4.5.45 d), 4.5 Annex C.5)
• Examiners must consider Priority Date for Singapore search in case application is 26(6) Divisional (4.5.31)
• Singapore applicant/agent's reference number (4.5.19)
• Suggested form of letter to the Singapore registry, at examination stage, when a search report covered all claims but also indicated Lack of Unity (4.5.45 b))
• Addition of sequence listing pages to Singapore Examination "Basis of Opinion/Report" (4.5 Annex C.2, 4.5 Annex D.2)
• Insertion of modifications to the PCT Administrative Instructions that come into effect on 1 July 2002 and 1 January 2004 (Part 9, Sections 110, 307 and 404)
• Adding the directives of the PCT assembly relating to establishing PCT fees (10.5.a)
• Minor rectifications to Actions for March 2002 amendments (1.PROCEDURE.3, 10.Amend.Action.23-10.Amend.Action.24)

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Official Notice

PCT Fees

13 June 2002

The International Bureau of WIPO has advised changes to PCT fees with effect from 15 June 2002 when the following fees will apply:

Basic Fee	AU $746	(650 CHF)
Per sheet in excess of 30	AU $17	(15 CHF)
Designation Fee	AU $161	(140 CHF)
Handling Fee	AU $267	(233 CHF)

*Any application filed which meets the administrative requirements for filing associated with WIPO's PCT-Easy software is subject to a reduction of AU $230 (200 CHF) from the total amount payable for filing the international application.

Enquiries
Peter Collier 02 6283 2503
Dave Herald 02 6283 2324

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Official Notice

Disruption of IP Australia's services - Further Information

13 June 2002

Implementation of Release 2.1 of the New Patent Solution (NPS) project is likely to occur over three weekends. The disruption to IP Australia's systems over this period is detailed below. Unfortunately at this stage, IP Australia is unable to provide any definite dates.

During the first weekend, implementation of Release 2.1 will occur and IP Australia will need to suspend access to its online services and in particular the on-line forms for filing innovation patent applications. This will begin on the Friday and continue over the weekend.

During the second weekend, existing innovation patent bibliographic data will be migrated into the new NPS system. Once again access to the patents area of online services will be suspended from the Friday and over this weekend.

During the third weekend, access to the Patent Administration system (Patadmin), the Patent Indexing system (Patindex) and online services will be suspended for two working days (the previous Thursday and Friday) and the weekend. On the Friday, access to the new NPS system will also need to be suspended. This suspension of services is necessary to ensure data integrity when the data is copied from Patadmin to the NPS system.

While Patadmin access is suspended, no bibliographic information will be available from Patadmin. While the NPS system access is suspended, no bibliographic information on new filings in the NPS system will be available. As highlighted in the previous Official Notice, other avenues for obtaining data include the Australian Official Journal of Patents (AOJP) and the CD-ROM products in the State Offices, although these may not necessarily contain the most up-to-date information in relation to particular patent applications.

On this Thursday, when Patadmin is suspended, extensive use of the mainframe computer will occur to retrieve data to migrate into the NPS system. Users may experience a noticeable decline in response times of other IP Australia mainframe systems including TMARK and possibly ATMOSS.

Please refer to the IP Australia website (see 'NPS News and Updates' within the 'What's New' section) for updates as to when disruptions will occur.

IP Australia apologises in advance for this disruption to its services.

For further information please contact the Customer Support Centre on 02 6283 2999.

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OFFICIAL NOTICE

Changes to the Patent Regulations

23 May 2002

On 16 May 2002 amendments to the Patents Regulations 1991 (the Regulations) were made. Those amendments are expected to be gazetted on 23 May 2002 and will come into effect on gazettal. The amendments relate to:

• the public availability of patent-related documents; and
• continuation and renewal fees for divisional and other applications.

Changes to the public availability of patent-related documents

These amendments to the Regulations provide that all documents, subject to certain limited exceptions, that are associated with a patent application are publicly available when the application is published, which is typically 18 months after the priority date of the application. These changes apply to both standard patent applications [subregulation 4.3(1)] and to PCT applications [subregulation 8.4(2)].

The amendments provide a comprehensive regime for the public availability of patent-related documents and simplify and expedite access to many documents that currently are not available until much later in the patent process or, in some limited cases, may only be available under the Freedom of Information Act 1982. All eligible documents that are associated with the application will be publicly available, regardless of whether they are filed before or after the date that the application is published.

The exemptions from this publication regime are:

• Documents associated with the application that are subject to legal privilege (typically legal advice given to the Commissioner in the course of litigation matters);
• Search results disclosed under subsection 45(3) of the Patents Act 1990; and
• Documents mentioned in subregulation 4.3(2) of the Regulations, which are currently exempted from publication.

[NOTE: While search results that are disclosed under subsection 45(3) of the Patents Act are not available at publication of the application, they do become available in the normal way under subsection 55(2). Subsection 55(2) of the Act provides for search results to become open to public inspection when a notice is published under paragraph 49(5)(b) or subsection 62(2).]

Continuation and renewal fees for divisional and certain other applications

Item 24 of the Patents Amendment Regulations 2002 (No. 1) amended the arrangements regarding whether a continuation or renewal fee for a divisional application for a standard patent was payable in the first 12 months after filing. This amendment also affected applications filed pursuant to sections 33 to 36 of the Patents Act.

The Official Notice in the AOJP of 21 March 2002 advised, in relation to standard applications that:

For a divisional application, if an anniversary for which a continuation or renewal fee is payable falls within the first 12 months of filing the divisional application, that fee will now be payable. The former regime, where no continuation fee or renewal fee was payable in the first 12 months after filing a divisional application, will cease. This change will only affect divisional applications filed on or after 1 April 2002.

As was advised in the AOJP of 18 April 2002, the transitional provision necessary to ensure that the above change only applied to applications filed on or after 1 April 2002 (the commencement date of the above amending Regulations) was omitted from the Regulations.

The present amendment to the Regulations rectify this by providing that the amendment made by item 24 of the Patents Amendment Regulations applies only in relation to applications filed on or after 1 April 2002.

Enquiries

Dave Herald 02 6283 2324
Karen Ayers 02 6283 2082

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OFFICIAL NOTICE

Disruption of IP Australia's Services

16 May 2002

IP Australia will be implementing Release 2.1 of the New Patent Solution (NPS) project in the coming weeks.

To ensure a successful implementation IP Australia will need to suspend access to some of our existing systems for a short period of time. These systems include Patent Administration (Patadmin) and Patent Indexing System (Patindex). Online Services relating to the filing of new standard and innovation patent applications and online transactions will also be affected. This is planned to occur from very late May through June. Unfortunately at this stage, IP Australia is unable to provide specific dates.

To allow sufficient time for data in relation to PCT designations to be copied from Patadmin to the new NPS 2.1 system, IP Australia will need to suspend all access to Patadmin, Patindex and Online Services. This is expected to be in the order of one to two working days and a weekend.

IP Australia is striving to minimise as much as possible the disruption this will cause to our customers. However, while Patadmin access is suspended, no bibliographic information will be available from Patadmin. Other avenues for obtaining relevant data include the Official Notices within the Australian Official Journal of Patents and the CD-ROM products which can be accessed in the State Offices.

IP Australia will continue to update its customers via its website (see 'NPS News and Updates' within the 'What's New' section) as we approach the time of implementation and will provide customers with more specific details of the times when disruptions will occur. IP Australia apologises in advance for this disruption to its services.

For further information please contact the Customer Support Centre on 02 6283 2999.

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OFFICIAL NOTICE

Continuation and Renewal Fees for Divisional and certain other applications

18 April 2002

The Amendments to the Patent Regulations that came into effect on 1 April 2002 included amendments to the arrangements regarding whether a continuation or renewal fee for a divisional application for a Standard patent was payable in the first 12 months after filing. This amendment also affected applications filed pursuant to s.33 to 36.

The Official Notice in the AOJP of 21 March 2002 advised that:

Standard Applications

For a divisional application, if an anniversary for which a continuation or renewal fee is payable falls within the first 12 months of filing the divisional application, that fee will now be payable. The former regime, where no continuation fee or renewal fee was payable in the first 12 months after filing a divisional application, will cease.

This change will only affect divisional applications filed on or after 1 April 2002.

Regrettably, the transitional provision necessary to give effect to this was omitted from the regulations.

This notice is to advise that:

The Commissioner is seeking, as a matter of urgency, amendments to the Regulations to provide the necessary transitional provision; and

• Until such time as that regulation is made, the Commissioner will exempt (Reg 22.6) the payment of any fee now payable under regulation 13.3 or 13.6 in respect:
  • of an application for a standard patent filed before 1 April 2002; or
  • a standard patent granted on such an application if that fee would not have been payable if regulation 13.3(2), as in force immediately before 1 April 2002, had continued to apply.

To give effect to this exemption, the Commissioner has executed an instrument of exemption on a global basis. Applicants wishing to have confirmation that the exemption has been granted in respect of a specific application should write to the Commissioner, identifying that application.

Enquiries:
Dave Herald (02) 6283 2324

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OFFICIAL NOTICE

PCT Fees

18 April 2002

WIPO has advised changes to PCT Fees with effect from the 15th June 2002.

From the 1 January 2002 the following PCT fees apply.

Basic Fee	AU $746
Per sheet in excess of 30	AU $17
Designation Fee	AU $161
Handling Fee	AU $267

*Any application filed which meets the administrative requirements for filing associated with WIPO's PCT-Easy software is subject to a reduction of AU$230 from the total amount payable for filing the international application.

Enquiries
Peter Collier 02 6283 2503
Dave Herald 02 6283 2324

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OFFICIAL NOTICE

Patents: Amendment of the Manual of Practice and Procedure

28th March, 2002

In March 2002 amendments were made to the Manual of Practice and Procedure Volume 1 - International.

The change relates to:

• General revision of the guidelines and practices for considering Unity of Invention and inviting additional search fees at international search. The changes include elaborations of previous requirements and practices with some new paragraphs together with reference to additional decisions before the EPO. The changes also reflect the decision of the Section Heads of 13/3/02 whereby protests would be controlled by DC(C) and that a single supervising examiner would constitute the protest board ("special instance of the ISA" - PCT Rule 40.2(c)) (Chapter 1.3, Part 1 Annex E).
  
  
• reflecting amendments commencing on 1 April 2002, deleting reference to PCT applications entering the national phase at 21 months, as all PCT applications now enter the national phase at 31 months, whether or not there has been a demand for international preliminary examination (1.PROCEDURE.3)
  
  
• revision of Part 3 to improve the logical flow of the of International Preliminary Examination examination procedures, in line with recent changes to Part 1 made in August 2001 (Part 3) Also including revision of the guidelines and practices for considering Unity of Invention and inviting additional examination fees at international preliminary examination. (para 3.5.5)

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OFFICIAL NOTICE

Patents: Amendment of the Manual of Practice and Procedure

28th March, 2002

In March 2002 amendments were made to the Manual of Practice and Procedure Volume 2 - National

The principal changes relate to:

• amendment as a consequence of amendments to the Patents Act commencing on 1 April 2002 of various references in the manual to the exercising by examiners of the benefit of the doubt in relation to novelty and inventive step (paras 0.2.4, 1.2.2, 3.6.5, 3.9, 4.2.1.7, 4.3.3.3, 4.3.10.2, 4.3.10.3.2, 4.3.11, 12.5.2, 12.10.2.2, 14.1, 30.4.3.3, Annex A to Part 12, Annex A to Part 13)
  
  
• reflecting amendments commencing on 1 April 2002, inserting information on the "grace period" in which publication by nominated persons or patentees, or their predecessors in title, of their invention less than 12 months before filing a complete application must be disregarded for novelty and inventive step purposes (paras 3.4.6, 3.4.6.3)
  
  
• revision of Part 4 ("inventive step") as a result of amendments to the Patents Act commencing on 1 April 2002 allowing pieces of prior art information to be combined, and as a result of a general review of the part (para 4.2.5.5, Part 4)
  
  
• reflecting amendments commencing on 1 April 2002, inserting the information that the matter disclosed in the abstract can be considered as matter disclosed in the specification as filed for the purposes of sec 102(1) (paras 7.9, 22.8.5.2)
  
  
• revision of aspects of "manner of manufacture", emphasising that the current office approach on "business methods" follows the approach in Welcome v Catuity, rather than Cooper's Application; removing the examples of business schemes or plans; and emphasising the distinction between manner of manufacture and novelty/inventive step for business methods (paras 8.2.2, 8.2.5, 8.2.7- 8.2.10)
  
  
• reflecting amendments commencing on 1 April 2002,inserting the information that for an application for an innovation patent which is made under secs 79B or 79C of the Act, a renewal fee that would otherwise be payable within 1 month after the grant is not required to be paid (paras 9.7, 30.2.1.3)
  
  
• reflecting the amendments made to secs 45(3) and 101D of the Patents Act commencing on 1 April 2002 amending the requirements for applicants to file search results, and associated general review of re-examination procedures set down in Part 21 (paras 12.5.9, 30.4.3.2, Part 21, Annex A to Part 14)
  
  
• reflecting amendments commencing on 1 April 2002, deleting reference to PCT applications entering the national phase at 21 months, as all PCT applications now enter the national phase at 31 months, whether or not there has been a demand for international preliminary examination (para 19.1.4.8)
  
  
• revision of Part 21 ("re-examination") as a result of amendments to the Patents Act commencing on 1 April 2002 giving the Commissioner a general power to re-examine standard applications before granting a patent, the interaction between that and the amendment of sec 45(3) requiring applicants to file results of searches, and as a result of a general review of the part (Part 21)
  
  
• insertion of references to the fact that, as a consequence of amendments to the Patents Act commencing on 1 April 2002, payment of a continuation fee is to be taken to include payment of that fee by a person other than the applicant, as well as the applicant (paras 23.3.3.2, 26.2.3)
  
  
• reflecting amendments commencing on 1 April 2002, inserting the information that a divisional application for an innovation patent for which the parent is a PCT application will not pass the formality check unless the parent PCT application is OPI (para 30.3.2.1)
  
  

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OFFICIAL NOTICE

Provision of Search Results [S.45(3)] and Modified Examination under s.48

March 2002

This notice is to clarify the operation of the provisions of s.45(3) (as amended on 1 April 2002) in relation to applications that are examined under Modified examination.

The provisions of s.45(3) [requiring an applicant to provide the results of searches] apply only to those applications that are examined under s.45.

Where an application is examined under s.48 (Modified examination), the provisions of s.45(3) do not apply. The restrictions on amendment imposed by s.102(2C) similarly do not apply.

Where an application is initially requested as a modified examination (under s.47), and subsequently full examination is requested [see s.47(2)] the obligations under s.45(3) will arise upon that conversion.

Inquiries: David Herald (02) 6283 2324

OFFICIAL NOTICE

Expected Amendment of the Patents Regulations
Effective 1 April 2002

25 March 2002

This notice is a summary of the changes that are expected to appear in the amendments to the Patents Regulations that are now expected to be made in late March, just before Easter. These amendments are expected to come into effect on 1 April 2002, at the same time as the commencement of the Patents Amendment Act 2001.

Please note that this information is provided for general information only. In particular, while this notice foreshadows what is expected to be in those regulations, changes in the law will only occur on the making of the relevant regulations. Practitioners should not rely on the contents of this notice for the purpose of providing definitive advice to clients. Rather, practitioners are advised to consult the amending regulations for the exact details, when they become available.

A previous notice gave an indication of the likely regime for the provision of search results. As indicated in that notice, the advice given therein was indicative. There have been some changes since that notice - and information provided below fully supersedes the information contained in that notice.

1. Provision of Search Results

a. Time for providing the search results - Standard Patents

The search results must be provided by the later of:

• 6 months from the completion of the search; or
• when requesting examination.

This period can be extended under the provisions of s.223.

The obligation under s.45(3) is to provide the results of all searches carried out "by or on behalf of the applicant, or the applicant's predecessor in title, prior to the grant of the patent." Note that the reference to 'prior to the grant…' refers to the time when the search was carried out; the time for compliance may expire some time after grant.

Modified examination
The provisions of s.45(3) [requiring an applicant to provide the results of searches] apply only to those applications that are examined under s.45. Where an application is examined under s.48 (Modified examination), the provisions of s.45(3) do not apply. The restrictions on amendment imposed by s.102(2C) similarly do not apply.

Where an application is initially requested as a modified examination (under s.47), and subsequently full examination is requested [see s.47(2)] the obligations under s.45(3) will arise upon that conversion.

Transitional arrangements

• The new requirements to provide search results will apply to all standard applications that have not been accepted before the commencement of the Act.
  
• Prior compliance with the previous s.45(3) provision does not relieve the applicant from complying with the new s.45(3) requirements, which are of broader scope. However, search results that were supplied under the previous s.45(3) provisions do not need to be re-submitted.
  
• The period for filing search results that would otherwise be due (or overdue) will be until 1 January 2003. This period can be extended under S.223.

b. Time for providing the search results - Innovation Patents

The search results must be provided by the later of:

• 3 months from the completion of the search; or
  
• if the patentee requests examination - when requesting examination; or
  
• if a third party requests examination - when the patentee pays their component of the examination fee.

This period can be extended under the provisions of s.223.

Note that the obligation under s.101D is to provide the results of all searches carried out "by or on behalf of the patentee, or the patentee's predecessor in title, prior to the issue of a certificate of examination in respect of the patent." Note that the reference to 'prior to the issue of a certificate…' refers to the time when the search was carried out; the time for compliance may expire some time after certification.

Transitional arrangements - Innovation patents
The new requirements to provide search results apply to innovation patents where the Commissioner had not started examination before the commencement date. Current practice of the Commissioner is, on receipt of a request for examination of an innovation patent, to forthwith issue a notice under current s.101D. Examination does not commence until either a response is received, or the time for filing a response has expired. Accordingly, where examination of an innovation patent has been requested before the commencement date, users can proceed on the following basis:

• If a response to a s.101D notice is filed on or before 22 March 2002 (or the time for filing a response expires by that date), examination will commence before 1 April 2002 and the old s.101D provisions apply;
  
• Otherwise, examination will not commence until after 1 April 2002, and the new s.101D requirements will apply.

c. Manner of providing the search results

The Regulations will provide that an applicant informs the Commissioner of the results of documentary searches by providing the following:
(a) if a patent office has conducted a search and has prepared a report of the search - the report;
(b) if a patent office has conducted a search but has not prepared a report of the search - a list of the documents cited by the patent office;
(c) if a search has been conducted by the applicant or another party - a list of documents that are the result of the search.

Para (a) relates to search reports such as those produced by the EPO and USPTO, and International Search Reports under the PCT. Para (b) covers those patent offices (such as the Australian Patent Office) where a search report as such is not generated during examination, but the search results are evident in the objections raised in examination.

Copies of the DOCUMENTS identified in the search report are NOT to be provided. Where a cited document is non-patent literature, bibliographic information sufficient to retrieve the document should be provided.

Where the search results are included as part of an examination report, or a commercial search report, that report may be submitted to comply with the disclosure requirements. However, applicants need to be aware that the documents submitted to comply with the disclosure requirements will become open to public inspection following advertisement of acceptance.

The process of conducting a search often entails the creation of a list of 'possible' documents, which is subsequently culled to create the final search results. Such intermediate lists would normally be considered to be an intermediate step to obtaining 'the results of' documentary searches, and therefore are not per se the results of a documentary search.

With regard to whether the search results have been filed within the required time - there will be no requirement for the applicant or patentee to advise the Commissioner of the date that the search was completed. However, applicants are reminded of the restrictions imposed by s.102(2C) if the search results are filed out of time.

2. Grace Period

It is expected that Regulation 2.2 and 2.3 will be amended to provide for a grace period to cover self-disclosure. The grace period is expected to be 12 months prior to the filing date of the complete specification.

It is expected that the new grace period provisions will only apply with respect to disclosures that are made on or after 1 April 2002.

The previous grace period provisions (eg exhibitions, learned societies etc.) will continue unchanged.

Regulation 2.3 will also be amended to ensure that the benefit of the grace period provisions (including the existing provisions) flow through to any divisional applications derived from an application dependant on the grace period provisions.

3. Date for National Phase Entry

Following the decision of the PCT Assembly last October, the regulations will provide that national phase entry is required within 31 months of the priority date of the application.

It is expected that the new time will apply to all applications which, as of 1 April 2002, have not lapsed for failure to enter the national phase before that date. In this event, for an application where no International Preliminary Examination has been requested, and the 21-month period expires on 28 March, the new provisions will not apply. However, if the 21-month period expires on 29 March the 31-month period will apply. (The effect of the Easter holidays is that such an application would have until 2 April to enter the national phase under the former provisions, and it therefore obtains the benefit of the new provisions.)

4. Re-examination; opposition

Re-examination before grant can now occur at any time after acceptance. This will allow the Commissioner to deal with any relevant citations brought to her attention after acceptance, under the new disclosure requirements under s.45(3).

Re-examination before grant remains entirely within the discretion of the Commissioner.

The traditional 'bar-to-sealing' process, which the Commissioner has initiated following the withdrawal of an opposition, will no longer be used. Rather, the Commissioner will re-examine the application if she considers it warranted in the circumstances.

Where an opposition is pending, the Commissioner is unlikely to initiate re-examination. Nor will she accede to a request for re-examination by one party to an opposition. However, the Commissioner will accede to a request to re-examine an application during opposition proceedings PROVIDED all parties to all oppositions on the application agree to the re-examination.

Having regard to the possibility of re-examination occurring at any time during an opposition, the time for serving evidence has been amended to remove all references that relate to, or are consequential upon, re-examination occurring. If re-examination does occur during examination, the Commissioner will use Directions to deal with any consequential effects on the conduct of the opposition.

Regulation 5.10(2)(c) will be clarified to make clear that it is a copy of the request for an extension of time that is served on the other party.

5. Continuation and renewal fees - Divisionals

Standard Applications
For a divisional application, if an anniversary for which a continuation or renewal fee is payable falls within the first 12 months of filing the divisional application, that fee will now be payable. The former regime, where no continuation fee or renewal fee was payable in the first 12 months after filing a divisional application, will cease.

This change will only affect divisional applications filed on or after 1 April 2002.

Innovation Patents
If an anniversary of the date of the patent falls within 1 month after the grant of an Innovation Patent filed as a divisional application, any renewal fee payable for that anniversary is taken to have been paid.

6. Extensions of time under s.223(2A)

The times prescribed for the new s.223(2A) extension of time provision will be:

1. The request under s.223(2A) must be filed within two months after the circumstances that prevented the person from doing the relevant act within the time required, ceases to exist.

2. The maximum extension available under s.223(2A) is 12 months after the end of the time within which the act is required to be done.

The fee regime will be the same as for extensions under s.223(2)(a).

7. Miscellaneous amendments - general

Time for acceptance

Relevant s.45(3) search results might be filed shortly before the 21-month time limit for acceptance. Also, a notice under s.27 might be filed shortly before the 21-month time limit for acceptance. A consequence is that a new objection might arise shortly before the expiration of the 21-month time for acceptance. Regulation 13.4 will be amended to allow that the final date for acceptance is at least three months from the date of a report first mentioning an objection based on information provided in the s.45(3) notice or s.27 notice.

A similar regime will be provided in relation to information provided under s.28 and s.101D vis-à-vis Innovation Patents.

Use of Abstracts

The status of an abstract accompanying a complete specification has been clarified. The regulations make it clear that an abstract is not taken into account when construing the nature of the invention. However, an abstract filed with the complete specification may be taken into account in determining, for amendments, whether a matter was in substance disclosed in the specification as filed.

Art.15(5) searches

The time for requesting a search under Art.15(5) of the PCT will be amended to be 10 months from filing the provisional application [see Reg. 19(2)]. This change formalises the Commissioner's past practice of conducting 'Belated 15(5) searches' - which will no longer be referred to as such.

8. Miscellaneous amendments - Innovation Patents

Innovation Patents filed as divisional applications from an unpublished PCT application

To ensure public availability of the specification of the parent application to a granted Innovation Patent filed as a divisional application of an unpublished PCT application, the regulations have included a formality requirement that the PCT application be a published application. That publication can be assured in several ways:

• Timing the filing of the Innovation Patent divisional such that the PCT application will be published under Art 21(2)(a) before grant of the Innovation Patent;
  
• Requesting early publication of the PCT application, under Art. 21(2)(b), such that publication occurs before grant of the Innovation Patent; or
  
• Requesting early entry into the national phase - such that the Commissioner can publish the application under s.62(3).

Filing 'Missing Parts'

The provisions relating to the filing of a 'missing part' of a specification have been amended to exclude 'missing parts' from being incorporated in the specification if the application has been accepted.

Inquiries

Dave Herald (02) 6283 2324

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OFFICIAL NOTICE

Removal of Benefit of Doubt in Patent Examination

22 March2002

Background

The Intellectual Property and Competition Review Committee, chaired by Henry Ergas, investigated the effects on competition in Australia by Australia's intellectual property laws (including the Patents Act 1990). They presented their report (referred to the Ergas Report) to the Government on 30 September 2000.

The Ergas report concluded that Australia's intellectual property laws act to promote competition by encouraging investment in innovation while striving to strike a balance between those incentives and society's interest in the widespread diffusion of ideas. The balance is reached through the nature and content of the right granted under the legislation. In that light, the Committee looked more deeply at the benefits and costs of the patent system and concluded that the balance would be better reflected in ensuring, to a greater extent, that patents are not granted where reasonable tests for validity are not met.

To this end, the Committee not only made recommendations to raise the requirements for grant, particularly in relation to inventive step, but also concluded that the applicant should not be given the "benefit of doubt" (as expounded in Microcell v The Commissioner of Patents (1959) 102 CLR 232) during examination with respect to novelty and inventive step. Instead, they recommended a more stringent test of "balance of probabilities" should apply. In their response to the report, the Government noted that this recommendation was consistent with the findings in the 1999 ACIP (Advisory Council on Industrial Property) report on enforcement. They therefore accepted the recommendation and amended the Patents Act to give it effect. The resulting amendments are part of the Patents Amendment Act 2001, which was assented to on 1 October 2001.

Apart from ensuring to a greater extent that invalid patents are not granted, a more stringent threshold test in examination will:

1. Provide to granted patents a higher presumption of validity which will benefit both the patentee and the public, who will have greater certainty regarding the scope of the patent. The examination standard would also be consistent with that applied in the courts and patents would therefore be less likely to be revoked.

2. Bring Australian practice into line with that in the major overseas Patent Offices, including US, EPO and Japan.

Legislation

To implement the recommendation, amendments were made to subsections 49(1) and section 101E(a) [see amendment items 15 and 20 in the Patents Amendment Act 2001, No. 160, 2001 (assented to on 1 October 2001)]. The new sub-sections read as follows:

49(1)

Subject to section 50, the Commissioner must accept a patent request and complete specification relating to an application for a standard patent, if:

(a) The Commissioner is satisfied that the invention, so far as claimed, satisfies the criteria mentioned in paragraph 18(1) (b); and (b) The Commissioner considers that:

(i) There is no lawful ground of objection [other than a ground in respect of paragraph 18(1)(b)] to the request and specification; or

(ii) Any such ground has been removed.

101E(a)

(a) after examining a patent under section 101B, the Commissioner decides in writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and

(aa) after so examining the patent, the Commissioner also decides in writing that he or she considers that

(i) a ground for the revocation of the patent [other than a ground in respect of paragraph 18(1A)(b)] has not been made out; or

(ii) any such ground has been removed …..

The Explanatory Memorandum notes that these subsections have been amended to raise the threshold test the Commissioner must apply when assessing an invention for novelty and inventive (or innovative) step. The Commissioner must now be satisfied that an invention is novel and inventive (or innovative) [ie: there are no lawful grounds of objection in relation to paragraph 18(1)(b)]. In contrast, the benefit of doubt still applies to the remaining grounds (ie: other than novelty and inventive (or innovative) step) where the Commissioner need only consider that there is no lawful ground of objection.

Note that Examiners will apply the new threshold test to all unaccepted cases on or after 1 April 2002 [see transitional (Application) provisions - items 32 (2) and (5) of the Patents Amendment Act 2001]. This means that examiners will be applying the test to ALL cases under examination (not only first reports).

Effect of the more stringent test on examination

For many of the cases being examined, the novelty and inventive (or innovative) step requirements are clearly met irrespective of any benefit of doubt considerations. Consequently, the Commissioner is not expecting there to be a significantly different outcome for the majority of cases.

Nevertheless, by specifying that the Commissioner must be "satisfied" that a claimed invention meets the criteria mentioned in paragraph 18(1)(b) (ie: that a claimed invention is novel and inventive), the effect of the legislative change is that the burden of proof in relation to that criteria ultimately shifts to the applicant. This onus however does not operate in the absence of a creditable challenge, that is, through the examiner establishing some reasonable basis on which the application can be said not to meet the legislative requirement. For example, the examiner may identify prior art which prima facie discloses each and every essential feature claimed.

Once a creditable challenge is made, the relevant standard governing the consideration of the circumstances and facts, including any response or evidence provided by the applicant, is the balance of probabilities. If it is more probable than not that paragraph 18(1)(b) is satisfied, then the requirement of paragraph 49(1)(a) is met. Otherwise, including the situation where the probabilities are equal, an objection must be maintained. Of course, where an objection is maintained, examiners will need to address the applicant's or patentee' arguments as per the Quality Standards. Therefore, further reports need to contain detailed reasons why an examiner is not satisfied with the submissions.

Because the current Quality Standards require that all prima facie reasonable objections are taken at first report, the legislative change will have little effect at that stage. At further report, where an examiner considers that a citation deprives a claim of its novelty and/or inventive (or innovative) step, they should be maintaining their objection until the applicant provides sufficient argument to satisfy them that their objection is not valid, on a balance of probabilities.

Of course, "the balance of probabilities" test applies because an examiner need only be "satisfied" according to the civil law standard. It is important, in this regard, to note the distinction between the criminal test of "beyond reasonable doubt" and the civil law standard of "balance of probabilities" as set out by the UK Court of Appeal in Dunlop Holdings Ltd. 's Application (1979) RPC 523 and as recommended by the Ergas and ACIP reports. This civil test requires an examiner to weigh up all the material before them and decide, on balance, whether a claimed invention is "more likely than not" to be novel and inventive (or innovative). This standard is the same as outlined in the USPTO Manual of Patent Examining Procedure (at 706):

"The standard in all cases is the "preponderance of the evidence test". In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable."

It is also similar to the UK practice which places the onus on the applicant to demonstrate "compliance when faced with a reasonable challenge".

In response to an examiner's objection, the applicant can provide submissions or evidence which can shift the balance of probabilities in their favour. The level of material required to bring the scales down on one side or the other will depend on the strength of the original objection as well as the nature of the issue to be determined. To assist applicants in overcoming an objection, examiners might be able to indicate examples of the type of submissions or evidence that might be useful. However, examiners cannot be prescriptive about the type of material required and the applicant has the option of responding to the objection in whatever way they see fit.

In most cases, persuasive reasoned argument from the applicant in response would be sufficient to tip the scales in the applicant's favour but there may be circumstances where more substantial evidence is required. For example, if something is improbable, more evidence would be required to convince an examiner than if something were inherently probable (see Dunlop Holdings supra).

Note that the examiner is generally not a skilled worker in the art and is therefore unlikely to be in the position to challenge the applicant's substantiated evidence (such as sworn affidavits). Therefore, such evidence should be accepted at face value unless there are strong grounds for not doing so (such as having documentary evidence to the contrary). Examiners should seek advice from their supervising examiners in such cases.

Examples of applying the change in standard in examination

The amount of evidence required to convince an examiner that an invention is more likely than not to be novel and inventive (or innovative) will be dependent on the issues in dispute and the strength of the original objection. Each case has to be determined on its merits and it is not possible to provide strict rules which will apply to all cases. The following (non-limiting) examples, however, may provide some guidance.

1. The claims define a material characterised by properties which have never been described before but the examiner reasonably believes may simply be inherent properties of an already known substance (see, for example, the office decision in National Starch and Chemical Investment Holding Corporation v Goodman Fielder Limited 43 IPR 421). The examiner takes a novelty objection based on the known substance. The onus would be on the applicant to convince the examiner that the claimed product is more likely than not to be different (for example, by adducing evidence of the properties of the known substance).

2. The examiner takes an objection which was based on their reasoned belief that a particular feature was likely to be part of the common general knowledge at the priority date. Depending on the art and the issues involved, the examiner may be convinced by short submissions from the applicant that a feature was not common general knowledge. Otherwise, the applicant may need to provide more substantial arguments or evidence to tip the balance in their favour.

3. In response to a novelty objection, the applicant argues that a particular citation is non-enabling. If the examiner considers this is more likely than not given the citation and the submissions, they can drop the objection. Otherwise, more substantive evidence or arguments might be required to establish the applicant's case.

4. The examiner has taken an inventive step objection on the basis that a person skilled in the art would have taken a certain step as a matter of routine. The applicant in responding argued that this was ex-post facto analysis. According to the applicant, should it have been obvious, then the invention would have been developed long before the priority date because the invention was highly commercially successful and had solved a great need in the art. If these assertions are probable or auxiliary to the main arguments (which were by themselves convincing), the examiner can drop the objection. Otherwise, the examiner should be requesting some evidence from the applicant to support their claim that the invention has been highly commercially successful or has meet some long-felt need.

5. The examiner has raised a novelty objection based on a particular interpretation of a term in the citation or the claim. The applicant in response argued that the term would have been construed differently by the skilled worker at the priority date. If the examiner is satisfied on a balance of probabilities that the second interpretation is correct, the objection should be dropped. Otherwise, the applicant should be providing more substantial evidence to support their argument.

6. The examiner raised a citation which prima facie was highly likely to have been published before the priority date although they were unable to establish a definitive publication date. If the applicant was privy to the publication details (for example, it was their own web-site), the evidentiary burden may lie with them to establish that the document was not published in time. Otherwise, the examiner should accept reasonable arguments from the applicant which question the publication date unless these can be reasonably challenged.

7. The examiner raised a citation for inventive step which the applicant argued at second report would not have been ascertained, understood and regarded as relevant. It would be up to the applicant to convince the examiner that this was the case. If the citation is from a reasonable source in an area related to the problem that was faced by the skilled worker in the art, the applicant is likely to require quite substantial arguments or evidence to satisfy the examiner that the document could not have been ascertained, understood or regarded as relevant.

8. The claims defined a number of compounds and the examiner raised a novelty citation based on a broader class of compounds which included the claimed compounds. In response to this novelty objection, the applicant argued that the claimed compounds were a selection from the prior art class because they met all the requirements for selection including that they had surprising and unexpected properties. If the argument is inherently probable, the submissions can be accepted but otherwise more substantial evidence or arguments may be required to satisfy the examiner that all the requirements for a selection had been met.

9. An inventive step objection was raised based on a mosaic of 2 documents. The applicant argued the skilled worker would not have reasonably expected to have combined these documents before the priority date. If the arguments appear probable, the objection should be dropped. Otherwise, the applicant may need more substantial evidence. [Note this objection would only apply to applications filed on or after 1 April 2002]

10. An objection was taken that a claimed invention in an innovation patent lacked an innovative step because, in the examiner's opinion, the only feature distinguishing the claim from the prior art did not appear to make a substantial contribution to the working of the invention. The patentee made a number of submissions pointing out the advantages of the additional feature. If these submissions seem plausible, the objection should be dropped. Otherwise, more substantial evidence may be required.

Conclusion

The changes to the Patents Act effective from 1 April 2002 will require the Commissioner to accept an application (or decide to certify an innovation patent) when satisfied that a claimed invention meets the criteria mentioned in paragraph 18(1)(b) [or paragraph 18(1A)(b)]. This change raises the examination standard from a 'benefit of doubt' requirement to one of 'balance of probabilities'. Thus, an examiner will accept (or decide to certify) only if, on balance, it is more likely than not that a claimed invention is novel and/or inventive (or innovative) based on the material before them. The change occasioned by this amendment to the law will ensure a higher presumption of validity of a patents granted (or certified) under Australian law.

OFFICIAL NOTICE

Provisions of search results - s.45(3) and 101D of the Patent Act

27 February 2002

The Patents Amendment Act 2001 is scheduled to commence on 1 April 2002. The Regulations relating to that Act are not expected to be made until the middle of March 2002.

The Commissioner recognises the need for practitioners to have relevant information relating to the new s.45(3) and 101D requirements as soon as possible. The following is provided as guidance on what the regulations are expected to contain with respect to the provision of search results under new s.45(3), and s101D, of the Patents Act. With particular reference to the time periods, it should be noted that some of these periods are not finally settled; however it is not expected that the regulations will provide for shorter periods than those indicated.

1. Time for providing the search results - Standard Patents

The search results must be provided by the later of:

• 3 months from the completion of the search; or
• when requesting examination.

An automatic extension of this period by up to 3 months will be available upon payment of a fee. S.223 will also be available where applicable.

The obligation under s.45(3) is to provide the results of all searches carried out "by or on behalf of the applicant, or the applicant's predecessor in title, prior to the grant of the patent." Note that the reference to 'prior to the grant…' determines the need to comply; the time for compliance may expire some time after grant.

Transitional arrangements

The new requirements to provide search results applies to all standard applications that had not been accepted before the commencement of the Act.

Prior compliance with the previous s.45(3) provision does not relieve the applicant from complying with the new s.45(3) requirements, which are of broader scope. However, search results that were supplied under the previous s.45(3) provisions do not need to be re-submitted.

The period for filing search results that would otherwise be due (or overdue) will be until 1 October 2002, extendible to 1 January 2003 upon payment of a fee. S.223 will also be available where applicable.

2. Time for providing the search results - Innovation Patents

The search results must be provided by the later of:

• 3 months from the completion of the search; or
• if the patentee requests examination - when requesting examination; or
• if a third party requests examination - when the patentee pays their component of the examination fee.

An automatic extension of this period by up to 3 months will be available upon payment of a fee. S.223 will also be available where applicable.

Note that the obligation under s.101D is to provide the results of all searches carried out "by or on behalf of the patentee, or the patentee's predecessor in title, prior to the issue of a certificate of examination in respect of the patent." Note that the reference to 'prior to the issue of a certificate…' determines the need to comply; the time for compliance may expire some time after certification.

Transitional arrangements - Innovation patents

The new requirements to provide search results apply to innovation patents where the Commissioner had not started examination before the commencement date. Current practice of the Commissioner is, on receipt of a request for examination of an innovation patent, to forthwith issue a notice under current s.101D. Examination does not commence until either a response is received, or the time for filing a response has expired. Accordingly, where examination of an innovation patent has been requested before the commencement date, users can proceed on the following basis:

If a response to a s.101D notice is filed on or before 22 March 2002 (or the time for filing a response expires by that date), examination will commence before 1 April 2002 and the old s.101D provisions apply;

Otherwise, examination will not commence until after 1 April 2002, and the new s.101D requirements will apply.

3. Manner of providing the search results

The search results are to be provided 'in the approved form' (with the details being set out by the Commissioner in Official Notices, rather than in the Regulations.) The manner of providing search results will depend in part upon how they are initially provided to the applicant/patentee or their representative.

For searches conducted by a patent office, where a distinct 'search report' is generated (eg. EP, USPTO) - a COPY of that report will be required.

For searches conducted by a patent office, where the results are communicated only in the context of examination objections - a list of the documents so cited.

For searches conducted by other organisations (including the applicant or their agent) - a list of the documents constituting the result of that search.

Where the search results are included as part of an examination report, or a commercial search report, that report may be submitted to comply with the disclosure requirements. However, applicants need to be aware that the documents submitted to comply with the disclosure requirements will be open to public inspection.

Copies of the DOCUMENTS identified in the search report are NOT to be provided. Where a cited document is non-patent literature, bibliographic information sufficient to retrieve the document should be provided.

The process of conducting a search often entails the creation of a list of 'possible' documents, which is subsequently culled to create the final search results. Such intermediate lists would normally be considered to be an intermediate step to obtaining 'the results of' documentary searches, and therefore are not per se the results of a documentary search.

Enquiries
General: Dave Herald (02) 6283 2324
Innovation Patent status: ERA team (02) 6283 2642 .

OFFICIAL NOTICE

Time for National Phase Entry under the PCT Countries that have filed 'reservations'

21 February 2002

Time for National Phase Entry under the PCT Countries that have filed 'reservations' 21 February 2002 The AOJP of 6 December 2001 advised of changes of the time limits fixed in Article 22(1) of the PCT for entry into the National Phase. Those changes were subject to transitional arrangements where the national legislation is incompatible with the changed time limits, and Offices intending to rely on those arrangements were required to notify the International Bureau by 31 January 2002. The following is a list of Offices (in their capacity as designated Offices) of States that have made this notification.

 

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