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Official notices: Patents pre 2002

OFFICIAL NOTICE

Formality check of Drawings in PCT applications

6 December 2001

The Australian Receiving Office notes substantially more Article 14 defects in respect of drawings than other offices. We frequently receive PCT applications where the covering letter indicates that 'informal' drawings have been filed - but nevertheless those drawings meet the PCT formality requirements. Our current practice in this situation is to issue an Art. 14 notice. This process generates unnecessary work and costs for both the office and applicants.

Accordingly future practice in the Australian Receiving Office will be as follows:

When assessing the drawings of a PCT application for compliance with the formality requirements of the PCT:

• Art. 14 notices with respect to the drawings will be issued only on the basis that they do not meet the Art. 14 requirements - having full regard to the requirements of PCT Rule 26.3(a)(i).
• In particular, an Art. 14 notice will NOT be issued merely because the attorney has asserted the drawings are informal.
• If no Art. 14 notice has been issued with respect to the drawings, but 'formal' drawings are subsequently filed, those subsequently filed drawings will merely be placed in the Home Copy file. No other action will be taken with respect to those drawings. In particular, they will not be forwarded to the International Bureau, nor copied to any other file.

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Time for National Phase Entry under the PCT

6 December 2001

At the September 2001 meeting of the PCT Union, the Assembly unanimously adopted the modifications of the time limits fixed in Article 22(1) of the PCT for entry into the national phase, from 20 months to 30 months. That is, the time for national phase entry will not depend upon whether a Demand for Preliminary Examination has been timely filed. Corresponding changes were also made to Rule 90bis.

The date of effect of this rule change under the PCT is 1 April 2002. It will apply to all PCT applications where the 20-month deadline for national phase entry has not expired as at 1 April 2002.

Importantly, while the change to the PCT is effective as of that date, transitional arrangements apply for Offices where the national legislation cannot be amended to give effect to this change until a later date. The Offices that will be relying on the transitional arrangement are required to notify the International Bureau by 31 January 2002 of that situation; such notifications will be promptly published.

Where an Office so notifies the International Bureau, the time limit for national phase entry in that Office will remain at 20 months (or the equivalent period actually provided in that Office).

Accordingly practitioners are advised that, following 1 April 2002, they should not assume that 30 months is available everywhere for national phase entry. Rather, they will need to review PCT applications before the 19-month deadline for filing a Demand - vis-à-vis whether all countries of interest to the applicant have amended their national law to be compliant with amended Article 22.

Article 22(1) of the PCT, as amended, together with the decisions relating to entry into force, and transitional arrangements, follow.

Article 22
Copy, Translation, and Fee, to Designated Offices

(1) The applicant shall furnish a copy of the international application (unless the communication provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not later than at the expiration of 30 months from the priority date. Where the national law of the designated State requires the indication of the name of and other prescribed data concerning the inventor but allows that these indications be furnished at a time later than that of the filing of a national application, the applicant shall, unless they were contained in the request, furnish the said indications to the national Office of or acting for the State not later than at the expiration of 30 months from the priority date.

DECISIONS RELATING TO ENTRY INTO FORCE AND TRANSITIONAL ARRANGEMENTS

(1) The modifications of the time limits fixed in Article 22(1) set out in Annex II shall, subject to paragraphs (2) and (3), enter into force on April 1, 2002. The modifications shall apply, so far as any designated Office is concerned, to any international application in respect of which the period of 20 months from the priority date expires on or after the date on which the modifications enter into force in respect of that Office and in respect of which the acts referred to in Article 22(1) have not yet been performed by the applicant.

(2) If, on October 3, 2001, any such modification is not compatible with the national law applied by a designated Office, it shall not apply in respect of that Office for as long as it continues not to be compatible with that law, provided that the said Office notifies the International Bureau accordingly by January 31, 2002. The notification shall be promptly published by the International Bureau in the Gazette.

(3) Any notification sent to the International Bureau under paragraph (2) may be withdrawn at any time. Such withdrawal shall be promptly published by the International Bureau in the Gazette and the modifications shall enter into force two months after the date of such publication or on such earlier or later date as may be indicated in the notice of withdrawal.

(4) It is recommended that any Contracting State whose national law is not compatible with the modifications take urgent action to amend its law to make it compatible so that a notification does not have to be given under paragraph (2) or, if such a notification must be given, so that it can be withdrawn under paragraph (3) as soon as possible thereafter.

(5) The amendments of Rule 90bis set out in Annex III shall enter into force on April 1, 2002.

Contact Dave Herald (02) 6283 2324

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OFFICIAL NOTICE

PCT Fees

13 December 2001

The International Bureau of WIPO has advised changes to PCT fees with effect from 1st January 2002 when the following fees will apply:

 

Basic Fee	AU $828	(650 CHF)
Per sheet in excess of 30	AU $19	(15 CHF)
Designation Fee	AU $178	(140 CHF)
Handling Fee	AU $297	(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 $255 (200 CHF) from the total amount payable for filing the international application.

Enquiries
Dave Herald	02 6283 2324
Anne Hammett	02 6283 2503

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OFFICIAL NOTICE

Changes to the Numbering System of Patent Documents

1 November 2001

With the introduction of the new innovation patent system in May 2001, IP Australia introduced the first element of a new numbering system of Australian patent documents. This new numbering system aligns with the preferred World Intellectual Property Organization (WIPO) numbering standard.

The new numbering system of Australia's patent documents is in accord with the preferred WIPO numbering standard of ccyyxxxxxx for both applications and patents. The standard identifies cc for the century, yy for the year and xxxxxx for a six digit number. A patent application will retain the same number from filing through acceptance and sealing to expiry thus allowing for simpler tracking of the application throughout its life.

Innovation patent applications range from 100000-199999, complete applications for standard patents will range from 200000-799999 and provisional applications will range from 900000-999999. Thus, the number 2002902113 would represent a provisional application numbered 902113 filed in 2002.

Coinciding with the expected implementation of Version 2 of the New Patent Solution project in February 2002, all new complete applications for standard patents and new provisional applications will be numbered in accordance with this new numbering format from this implementation date.

IP Australia will advise its customers of the exact date for the start of the new numbering system, and about existing applications and how these will be tracked under the new numbering system closer to the implementation date for Version 2 of the NPS project.

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

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OFFICIAL NOTICE

Patents: Amendment of the Manual of Practice and Procedure

12 October 2001

In October 2001 amendments were made to the Manual of Practice and Procedure Volume 2 - National.

The principal changes relate to:

• inserting the Novelty Inventive Step Quality Check Process (para 0.3)
• clarification of what constitutes a recognised exhibition and a learned society (para 3.4.6)
• setting down what action is to be taken when a patentee seeks to amend a patent request after grant (para 5.2.2.3)
• clarifying the requirements for applicants to include their Australian Company Number, Australian Registered Body Number and/or Australian Business Number on patent requests or other documents relating to prosecuting a patent application (para 5.2.3.2)
• updating the final report form P/01/006 and the guidelines on its completion (Annex B to Part 12)
• variation of the practice in relation to postponement of acceptance (para 14.14)
• stipulating that, when amendments are proposed in response to a hearing officer's decision, the examiner processing the amendment should refer the matter to the hearing officer at each report stage (para 22.13.5)
• clarifying that the amount of any refund of fees in the case of a withdrawn application will depend on the particular circumstances of the case (para 23.2.1)
• updating the details of examiner delegations (para 25.4, Annex A and Annex B to Part 25)
• clarifying that it is not possible to make a divisional application for a standard patent from an innovation patent application which is a divisional application from a granted petty patent (para 30.1.13.4)
• establishing examiner practice in relation to unpaid fees (paras 12.2.3.6, 14.12, 22.4.1, 26.2 and 26.3)

Other changes relate to minor clarifications, elaborations, updates and correction of typographical errors.

Please note that principal changes, other than revisions to whole parts involving large scale changes to text, will be indicated with an outside border.

The amendment action required is shown below and in Part 32 at 32.Amend. Action.24.

The resulting composition will be as shown in Part 32 at 32.Amend. Status.

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OFFICIAL NOTICE

Amendment of the Manual of Practice and Procedure

8 October 2001

In October 2001 amendments were made to the Manual of Practice and Procedure Volume 1 - International.

The principal changes relate to:

• Addition of PCT Timeline (1.Procedure.3)
• Updating of on-line search practices (paras 1.1.9, 1.2.4, 1.7.5, 1.7.6, 1.7.7, 1.8.1)
• Providing information on "Kind" identifying codes for published US Patents (para 1.11.32.2, part 1 Annex Z)
• Update of guidelines for PCT International Search Refunds (part 1 Annex S)
• Clarification of 15(5) Search Statement procedures for claims (para 2.7.5)
• Clarification on requesting translations of citations for Singapore cases (paras 4.5.7, 4.5.40)
• Determining the deemed Singapore filing date for 26(6) applications (divisionals) (para 4.5.22)
• Changes to the manner of citing JP documents (page 8.4)
• Addition of Philippines as a PCT Contracting State (page 10.4.a)

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OFFICIAL NOTICE

Postponement of Acceptance-Section 49(3) & (4)

20 September 2001

Section 49(3) of the Act allows applicants to request postponement of acceptance to a date not later than the final date for acceptance.

In recent years, the number of requests for postponement has increased significantly. Postponement of acceptance ensures that where a practitioner wants an adverse first report to issue so that the application can be reviewed generally before acceptance, a report will issue. Other mechanisms - such as deliberately not filing certain documents, or deliberately including 'nonsense' claims - do not guarantee an adverse report issuing.

Commissioner's handling of postponement

The Commissioner handles postponement of acceptance in the following manner.

• Where an application is otherwise in order for acceptance, and there is a current postponement of acceptance in place, the examiner will issue an adverse report. The substance of that report will be that the application is otherwise in order for acceptance, but cannot be accepted because acceptance has been postponed to a future date.
• The Commissioner will not monitor when the date for postponement has expired, and will not retrieve the application when postponement has expired in order to review whether it can be accepted. Where a report is issued based solely on the existence of the postponement, the practitioner must respond to that adverse report in order to gain acceptance.
• Where a postponement is currently in effect, the Commissioner will only proceed to accept the application if there is a clear and unambiguous statement by the applicant that the postponement request is withdrawn.
• Purported acceptances made contrary to the request for postponement will generally be treated as being invalid and of no effect.

Advice to practitioners

The following points are provided to assist practitioners make the best use of the postponement mechanism.

• Any request for postponement of acceptance should be clearly made - preferably on a separate page - to avoid the request being overlooked.
• When responding to an examination report: If the intention is for the application to be accepted if there are no objections, the response should unambiguously withdraw any request for postponement. It should include words like:

"I submit the application is now in order for acceptance, and I withdraw any requests for postponement of acceptance."

The Commissioner will not infer that the request for postponement is withdrawn if the applicant merely uses the phrase

"I submit the application is now in order for acceptance" or similar phrases.

• A clear rescinder of the postponement of acceptance is particularly important if the response is being filed close to the final date for acceptance, and a postponement is still in effect - to avoid unnecessary delays in accepting the application.
• Requests for postponement may specify the date of postponement by a variety of manners.

Specify a particular date.

Applicants may wish to specify a specific date for the postponement of acceptance. Eg "… to 1 January 2003."

This has the clear advantage of being able to be entered into the practitioner's diary system when the request is made. If such a request is made at the time of requesting examination, the date needs to be sufficiently far in advance as to occur after the first report is issued, but before the final date for acceptance. The Commissioner suggests that an appropriate date might be 18 months from the date of requesting examination.

If the request is made after the first examination report has issued, the date should not be later than 21 months from the date of the first report. [Note s.49(4)]

Specify a particular date by reference to the date of the first report

Applicants may wish to specify a date that is solely conditioned on the date of the first report.Eg "… to a date 3 months after the date of the first report"

This request ensures that the specified date is after the issuance of the first examination report, and less than 21 months from the date of that report.

The major disadvantage is that the practitioner cannot enter a definite date into their diary system until the first report has issued, and will need a reminder system to enter the date at that time.

To a date specified only by conditions

In the past the Commissioner has received conditional request such as:

• Until a notice of entitlement has been filed
• Until the translation of Document X has been filed

While such conditional requests will be recognised by the Commissioner, the applicant has the responsibility of responding to the examination report subsequent to the expiration of the condition. It is noted that practitioners may have some difficulty in diarying such requests. The possibility that legislative change could affect the condition also needs to be considered.

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OFFICIAL NOTICE

Patents: Amendment of the Manual of Practice and Procedure

19 September 2001

In August 2001 amendments were made to the Manual of Practice and Procedure Volume 1 - International.

The principal changes relate to:

• Specifying that the applicant's reference used is the latest reference from the applicant's correspondence (not WIPO's correspondence) (para 1.11.4)
• Clarification of reporting practice regarding omnibus claims (para 1.11.23)
• Standardising reporting practice for fields searched (paras 1.11.20 - 1.11.32)
• Standardising reporting practice for family listing when there are no family members reported by INPADOC (i.e documents published 1968 or later) (para 1.11.34)
• Addition of reference to electronic and automatic generation of Family Listings using Author Keying macros. (para 1.11.34 Option B)
• Standardising reporting practice for citations and extra examples added

ISR Check Sheet replaced by new ISR Checklist (Annex U)

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OFFICIAL NOTICE

Patents: Amendment of the Manual of Practice and Procedure

In June 2001 amendments were made to the Manual of Practice and Procedure Volume 2 - National

The principle changes relate to:

• setting down certain considerations applying to determining filing dates and calculating time periods in an environment of electronic filing and the PCT and Madrid Protocol rules (para 2.4)
• providing guidance in the use of purposive construction of claims directed to compounds, for determining the novelty of those claims (para 3.12.9)
• including a reference to the decision Welcome Real-Time SA v Catuity Inc [2001] FCA 445 pertaining to, inter alia, business methods (para 8.4.2.5)
• including "an electronic medium characterised by the nucleotide or protein sequence data recorded thereon" as an example of something which is not a manner of manufacture (para 8.2.9.2b)) ·
• clarifying the effect of the word "for" on the scope of claims to methods and processes (para 10.8.2.1)
• clarifying in relation to translations of PCT applications that any passage headed "Abstract" should be taken to be the abstract and should be disregarded for all purposes pertaining to the complete specification (para 3.12.9)
• setting down what action should be taken when examining a national phase case published without an ISR (para 19.7.1)
• elaborating on the action to be taken when examining a national phase case where the IPER is missing (para 19.10.6.2)
• making reference to Altantis Corporation Pty Ltd v Schindler (No.3) [2000 FCA 1758] as providing guidance as to what constitute relevant proceedings for the purposes of sec 112 (para 22.3.4.1)
• clarifying the formalities requirements relating to numbering of pages, lines and paragraphs of a specification (para 28.3)
• setting down the practice in relation to the returning of filed documents (para 28.8) Other changes relate to minor clarifications, elaborations, updates and correction of typographical errors.
• Please note that principle changes, other than revisions to whole parts involving large scale changes to text, will be indicated with an outside border.

The amendment action required is shown below and in Part 32 at 32.Amend. Action.23

The resulting composition will be as shown in Part 32 at 32.Amend. Status

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OFFICIAL NOTICE

Patents: Amendment of the Manual of Practice and Procedure

In June 2001 amendments were made to the Manual of Practice and Procedure Volume 2 - National

The principle changes relate to:

• setting down certain considerations applying to determining filing dates and calculating time periods in an environment of electronic filing and the PCT and Madrid Protocol rules (para 2.4)
  
  
• providing guidance in the use of purposive construction of claims directed to compounds, for determining the novelty of those claims (para 3.12.9)
  
  
• including a reference to the decision Welcome Real-Time SA v Catuity Inc [2001] FCA 445 pertaining to, inter alia, business methods (para 8.4.2.5)
  
  
• including "an electronic medium characterised by the nucleotide or protein sequence data recorded thereon" as an example of something which is not a manner of manufacture (para 8.2.9.2b)
  
  
• clarifying the effect of the word "for" on the scope of claims to methods and processes (para 10.8.2.1)
  
  
• clarifying in relation to translations of PCT applications that any passage headed "Abstract" should be taken to be the abstract and should be disregarded for all purposes pertaining to the complete specification (para 3.12.9)
  
  
• setting down what action should be taken when examining a national phase case published without an ISR (para 19.7.1)
  
  
• elaborating on the action to be taken when examining a national phase case where the IPER is missing (para 19.10.6.2)
  
  
• making reference to Altantis Corporation Pty Ltd v Schindler (No.3) [2000 FCA 1758] as providing guidance as to what constitute relevant proceedings for the purposes of sec 112 (para 22.3.4.1)
  
  
• clarifying the formalities requirements relating to numbering of pages, lines and paragraphs of a specification (para 28.3)
  
  
• setting down the practice in relation to the returning of filed documents (para 28.8)

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OFFICIAL NOTICE

Time Periods and 'local' holidays

IP Australia is currently reviewing its practice under the patents, trade marks and designs legislation (IP legislation) in relation to time periods generally and specifically to time periods that expire on a Saturday, Sunday, public holiday, or bank holiday. As part of this general review of time periods, please note that the Patents Regulations have been recently amended to clarify the way in which periods measured in months are calculated.

The expiration of time periods under the IP legislation is largely governed by s.36(2) of the Acts Interpretation Act 1901 (AI Act). The AI Act generally provides that if a time period expires on a weekend, public holiday or a bank holiday then the period actually expires on the next day that is not such a day. This reflects current IP Australia practice.

The imminent application of the Electronic Transactions Act 1999 (ET Act) for electronic filings (which includes facsimile) to all the IP legislation also needs to be taken into account - the ET Act has applied to the patents legislation from 24 May 2001 and will apply to the remainder from 1 July 2001. Also relevant is Rule 80 of the Patent Cooperation Treaty and Rule 4 of the Madrid Protocol for documents filed under those Treaties.

The review has indicated that there is no issue of uncertainty or inconsistency with current practice in relation to the expiration of time periods that fall on weekends and national public holidays (ie, those holidays falling on the same day throughout Australia).

However, many public holidays apply only in the location of some offices of IP Australia - such that some, but not all, offices are closed - while offices of IP Australia are generally not closed on bank holidays. In these cases of local public holidays (ie those holidays that are not national public holidays) and bank holidays, the situation is not as certain for the expiration of time periods - the operation of the IP legislation, the AI Act, the ET Act and the PCT and Madrid Protocol Rules can lead to inconsistent results.

In the interests of providing certainty and consistency to our customers to safeguard rights, IP Australia is proposing to seek amendments of the IP legislation to set out clearly the approach in relation to time periods. To help achieve a consistent and certain approach and also take into account the operation of the ET Act and the PCT and Madrid Protocol Rules it is necessary to establish the central Canberra Office as the relevant Office for the measurement of time periods.

This means for documents filed electronically (including by facsimile), the day on which the document is considered to be filed would be determined by the date in Canberra and not the date in the location where the person sending the electronic communication is located - if a document is filed electronically it would therefore need to be filed before 12.00 midnight Canberra time zone to be accorded a filing with that date.

For time periods that expire on a weekend, public holiday or bank holiday, IP Australia's proposed approach would only recognise weekends, national public holidays and Canberra public holidays as the relevant days for which a period would expire on the next day that is not such a day.

As a result of the proposed approach, local public holidays (other than in Canberra) and bank holidays would no longer be recognised. Therefore if a time period ends on such a day, the period would not be extended as a result of that holiday.

IP Australia will consult more fully with customers and practitioners before implementing this proposed approach to time periods. However, we are of the view that the proposed approach would best provide the necessary certainty for customers, particularly in relation to filings under the PCT and Madrid Protocol. Please note that as this proposed approach to handling the expiration of time periods would require amendments to the primary IP legislation, it would not come into effect until 2002 at the earliest.

In the interim, customers and practitioners are therefore advised to note the uncertainty surrounding the effect of local time zones and local public holidays and bank holidays on time periods, and to avoid reliance on such time zones and holidays when filing documents at the end of a period.

In this regard, customers and practitioners should note that while the Patents and Trade Marks Acts provide a general extension of time mechanism to cover certain situations where an act has not been done within a time period, there are no such corresponding extension of time provisions under the PCT and the Madrid Protocol to cover analogous situations.

If in the interim customers and practitioners wish to rely on local time zones and local public holidays, they should not assume that the expiration of time periods is determined by s.36(2) of the AI Act in isolation. The following examples serve as a guide to illustrate the interaction between the IP legislation, the AI Act, the ET Act and the PCT and Madrid Protocol. Customers and practitioners should carefully assess this interaction if relying on local time zones and local public holidays and recognise that different outcomes can result. We can only again emphasise that customers and practitioners should avoid placing reliance on local time zones and local public holidays when filing documents at the end of a period.

Illustrative examples of the current effect of local time zones and local holidays on time periods

Time periods generally

1. For paper documents:

• the day on which a document is filed is determined by the date at the State Office (while open for business) at which the document is filed.

2. For documents filed electronically (NOT including facsimile):

• the day on which a document is filed is determined by the date in Canberra (in accordance with the ET Act) and NOT the date in the location where the person sending the electronic communication is located.

3. For documents filed electronically by facsimile:

• IP Australia has established business rules which encourage applicants to use our central fax number in Canberra. This overcomes the uncertainty which governs the application of dates to facsimile messages. In this instance the day on which a document is filed is determined by the date in Canberra (in accordance with the ET Act) and NOT the date in the location where the person sending the facsimile is located.
• If an applicant does not use our advertised number in Canberra but sends a document to a fax machine elsewhere in IP Australia, we will give the document the time and date it is received in that location. However, there is less certainty in this situation. It is arguable (under the provisions of the ET Act or the PCT or Madrid Protocol) that the date is determined by the date existing in Canberra irrespective of where the receiving facsimile machine is located. When using facsimile, customers and practitioners are therefore strongly encouraged to use our advertised central number in Canberra whenever possible.

Effect of holidays on time periods

1. For paper documents filed under the Patents, Trade Marks and Designs Acts:

• if a public holiday or bank holiday occurs in the location of a State Office on the last day of a time period; and
• the document is filed at the Office where that holiday occurred,

the period is extended to the next day that is not such a day.

However the period is NOT so extended if it is filed in an Office where the public holiday or bank holiday did not occur.

2. For documents filed electronically (NOT including facsimile) under the Patents, Trade Marks and Designs Acts:

• these documents are considered to be filed at the Canberra office and so only holidays in Canberra are relevant; and
• if a public holiday or bank holiday occurs in Canberra on the last day of a time period, the period is extended to the next day that is not such a day.

3. For documents filed electronically by facsimile under the Patents, Trade Marks and Designs Acts:

• documents filed by facsimile to the central IP Australia fax number are filed at the Canberra office and so only holidays in Canberra are relevant; and
• if a public holiday or bank holiday occurs in Canberra on the last day of a time period, the period is extended to the next day that is not such a day.
• If an applicant does not use our advertised number in Canberra but sends a document to a fax machine elsewhere in IP Australia and a public holiday or bank holiday occurs in that location on the last day of a time period we will give the document the time and date it is received in that location. However, there is uncertainty about whether the local holiday extends the period for filing the document. When using facsimile, customers and practitioners are therefore strongly encouraged to use our advertised central number in Canberra whenever possible.

4. For documents filed under the PCT and the Madrid Protocol: ·

• there is no recognition of bank holidays;
• while IP Australia believes that a document filed in reliance of a local public holiday would be entitled to the beneficial application of PCT Rule 80.5 or Madrid Protocol Rule 4(4) and will continue to advise WIPO of compliance of time periods on that basis, customers and practitioners are advised that there may be uncertainty - Rules 80.4(b) and 80.5 of the PCT and Rule 4(4) of the Madrid Protocol arguably only recognise holidays that exist in Canberra. Accordingly, customers and practitioners are strongly encouraged not to place reliance on local public holidays unless absolutely necessary.
  
  

OFFICIAL NOTICE

Time Periods under the Patents Act 1990

This notice concerns two issues relating to how the Commissioner of Patents computes time periods measured in months under the Patents Act 1990.

The practice of the Commissioner has been to treat the end of a period measured in months as occurring on the day having the same day number (the 'corresponding day' rule) as the event which triggered the event (or the last day of the month, if that is earlier). In the absence of specific provision in the Patents Act, the rules for determining such periods are set out in ss36(1) and 22(1)(g) of the Commonwealth Acts Interpretation Act.

The first issue is about when a period of months measured from the last day of a month ends. By way of example - whether one month from 28 February ends on 28 March (the traditional position) or 31 March; and whether two months from 28 February ends on 28 April or 30 April. The Commissioner has received advice that (following the Acts Interpretation Act) a period of one month from 28 February would expire on 31 March, and a period of 2 months from 28 February would most likely expire on 30 April. This is different to the way time periods have traditionally been computed, and to the way periods of months are calculated in Rule 80.2 of the PCT .

The second issue concerns when the period commences - and in particular, whether the day of the event that triggers the period is included in the period. S.36(1) of the Acts Interpretation Act makes it clear that the triggering day is not included in the period - unless the contrary intention appears. The traditional way of calculating time periods has not included the triggering day in the period. However, regulations 6.11(3) and 13.4 of the Patents Act have now been identified as providing for a 'contrary intention'. These provisions make it clear that the period commences on the relevant triggering day - which means that the periods specified by those provisions expire one day prior to the traditional 'corresponding day' date.

On learning of the problem on 14 March 2001, procedures were immediately put in place in the Patent Office to ensure that any future acceptances of patent applications occurred on the day before the traditional '21-month due date' - or in the alternative, to ensure that a s.223(1) extension of time for one day was granted to extend the final date for acceptance to the date that was previously understood to be the final date for acceptance. This will continue until the relevant regulations are amended.

The Commissioner has now received legal advice concerning the validity of past actions taken on the last day of the traditional '21-month due date' - i.e. actions taken one day after the time for acceptance had expired. The essence of that advice is that those actions are nevertheless valid, as a result of the obligatory operation of s.223(1) of the Patents Act 1990 - and that no retrospective action is required. Those actions include (but are not limited to):

• acceptance of the application;
• timely filing of divisional applications;
• conversion of examination type from modified to full;
• conversion of application type from standard to petty; and
• s.223(2) extensions of time for acceptance, if the actual grant was expressed as being 'from' a specified date for acceptance.

Amendments to the Patent Regulations that come into effect on 24 May 2001 (to implement the Innovation Patent) will include amendments to:

• amend patent regulations 6.11(3) and 13.4 to ensure the period does not include the day of the first report
• define the way time periods expressed in months are calculated under the Patents Act - in a manner corresponding to Rule 80.2 of the PCT.

The practical affect of these amendments is that time periods expressed in months will be computed in a way consistent with the past practice of the Commissioner (as well as with the PCT.)

Until those amendments are made, the Commissioner will take steps to ensure that no one is disadvantaged as a result of any misunderstanding about how the end of periods are calculated.

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OFFICIAL NOTICE

Amendments to the Patents Act and Regulations

The Patents (Innovations Patents) Amendment Act comes into force on May 24, together with amendments to the regulations. The following is a summary of those amendments with an indication where appropriate, of the significance of the change.

Note that while many of the amendments are specific to the implementation of the innovation patent, there are many other amendments that will generally affect practice before the Commissioner. These are detailed separately below.

Innovation patents

The following is a summary of the provisions expected to be in the Patent Regulations to implement the Innovation Patents system as of May 24. Where possible, indicative regulation numbers are given.

Priority documents and translations

Priority document must be on file before the decision to Certify [Regs R8.6(2), 1.6(1B).] Translation is only required following specific request by the Commissioner. If a translation is required during examination, the time for certification is at least 5 months from date of request for translation. [Regs 8.6(2), 1.6(1B), 9A.4(d)]

Microorganism deposit receipts

Must be filed by acceptance. [Reg 1.5(1)(b)(ii)] Note that the 'expert release' option of reg 3.25(3) is not available, as there is no pre-grant publication.

Exhibition details

Must be filed within 6 months of filing date [Reg 2.2(4)]

Notice under s.28

Must be filed before decision to certify. Only one copy required. [Reg 2.6, 2.7]

Request

Must be in the approved form. There is no notice of entitlement per se. For the request to be in the 'approved' form it must include assertions of entitlement to the invention. If priority is claimed from other applications (Divisional, Convention, association, micro-organism deposits) the request form must also identify that claim and include an assertion of entitlement with respect to that claim.

An Innovation patent cannot be granted as a patent of addition. [s.80]

Formalities check

The formalities check will cover:

• Request in the approved form
• Substantial compliance with the third schedule (incl. description in a foreign language, or by way of cross-reference.)
• If claiming priority, that the application was filed within the relevant time limits
• Microorganism deposit receipts
• Claims for plants/animals/human beings

The time to remedy formality defects is generally 2 months from the date of the formality direction.

In recognition of the potential for argument about whether something is in fact a plant/animals/human being, a response to such a formality objection is required within 2 months, with up to 4 month being available for the problem to be addressed. [Reg 3.2B]

Priority date - divisionals filed during examination of an Innovation Patent

If examination of the divisional is not requested within 2 months of the grant of the divisional, the priority date does NOT go back to the parent application. [s.43(6), Reg 3.12(1)(d)]

Oppositions (101M)

Oppositions under s.101M proceed essentially the same as for any other opposition, except as follows:

• Can be filed at any time after certification [Reg5.3AA(2)] - whether or not the patent has previously been opposed.
• Statement of grounds and particulars must be filed with the notice of opposition; [R5.3AA(3)]
• Notice and Statement must be served within 7 days of filing the notice - together with any evidence in support [R5.3AA(4), 5.8(1)(a)]
• Evidence in support must be filed as soon as practicable after service. [R5.8(1)(b)]
• Evidence in answer runs from date of service of the notice of opposition [R5.8(3)(a)(i)]
• The Commissioner may dismiss the opposition if the statement is not filed with the notice of opposition [R5.5(4)(a)]
• The time for filing Statement, and serving evidence in support, is only extendable under s.223 [R5.10(1)(b), 22.11(4)(a)]

Note that other types of oppositions in relation to innovation patents proceed in the usual manner.

Divisional applications

A divisional application filed before grant of the parent can be for either a standard, or an innovation, patent [s79B, R6A.1] - but not if the parent application was a divisional application filed under s.79C. [S79B(1A)]

A divisional application for an innovation patent can be filed in the period from commencement of examination to 1 month following advertisement of certification, of the parent Innovation Patent. [s.79C, R6A.2]

PCT

An innovation patent cannot be specified in an International application. [s.89(1)] (However there is nothing to prevent conversion to an innovation patent after national phase entry.)

Requesting Examination

• Patentee can request examination. $290
• Third party can request examination. $145
• If third party requests examination, patentee has two months to pay $145. If that fee is not paid, the patent will cease. [s.143A(a), R22.2D(3)]
• Only the person who requested the examination can withdraw the request. Withdrawal can only be based on error. The request for examination cannot be withdrawn after examination has begun. [Reg 9A.1(4)]
• Once examination has begun, no new requests for examination can be made. [Reg 9A.1(5)]
• Copies of all examination reports are sent to a third-party who requested the examination. [Reg 9A.3(5)]

Examination

• Commissioner cannot examine until after grant [Reg 9A.2] (But request to examine can be filed earlier.)
• Fixed period of 6 months to overcome all objections [R9A.4] - although a longer period is allowed in certain circumstances - such as when a translation of the priority document is required.
• Entitlement will not be considered.
• Material filed under s.28 must be considered.[Reg 9A.5]

Amendments

Before grant, and during examination - no fee

Requirement that amendment must fall within scope of claims before amendment - only after decision to certify. [s.102(2A)(b)]

Amendments other than in response to a formality report are not allowable before grant. [Reg 10.3(7)]

Amendments that would result in the specification claiming matter in contravention of 18(2) or 18(3) of the Act, are not allowable. [R10.3(8)]

Conversions

• A patent request for an innovation patent can be converted to a patent request for a standard patent and vice versa. There is a fee associated with these conversions [Schedule 7, part 2, item 15(b) - $105].
• After acceptance, no conversions are allowed [Reg 10.3(3)(b)].
• If a request to convert an innovation patent application to a standard patent application is received before acceptance, and no fee accompanies the request, an invitation to pay the fee will be sent. The applicant will be given 1 month to pay [Reg 22.2H(4)]. However, the request will only be considered to be filed on the date that the fee is paid [Reg 22.2H(3)].
  Therefore, the request will only be actioned when the fee is received [Reg 22.2H(2)].

Court proceedings

Applications to the court in relation various proceedings cannot be commenced unless the patent has been certified. [s.120(1), 126(1), 133(1), 138(1A), 169(4), Regs 12.1(2)(a)(v),12.4(1)(b) 17.1]

Renewal fees

Renewal fees are due at the second and subsequent anniversaries. Usual rules apply with respect to the 6-month grace period, and for when the application is filed as a divisional application.

Fees for Innovation Patents

The following fees apply to innovation patents. Unless listed in this table, other fee items listed in schedule 7 apply to both Standard and Innovation applications/patents.

Description

Amount

Filing fee - in paper form Filing fee - on-line Request Examination (Patentee) Request Examination (Paid by Patentee when 3rd party requests examination) Request Examination (Paid by 3rd party when requesting examination) Convert Innovation to Standard Patent 2nd Anniversary renewal fee 3rd Anniversary renewal fee 4th Anniversary renewal fee 5th Anniversary renewal fee 6th Anniversary renewal fee 7th Anniversary renewal fee Late payment of renewal fees - per month

$ 180 $ 150 $ 290 $ 145 $ 145 $ 105 $ 100 $ 100 $ 100 $ 165 $ 200 $ 235 $ 65

Other changes in the Act and Regulations

The following is a summary of various changes in the Act and regulations.

Changes in the Act

Entitlement disputes - operation of ss 32 to 36.

Sections 33 to 36 have been redrafted to better allow for their operation when there has been a finding of joint entitlement between the applicant of record and a person challenging entitlement [which has been a common outcome of proceedings under these provisions.]

The regulations under s.32 (reg 3.6) have been amended to remove the mandatory advertisement of a request before any action could commence. The regulatory regime is now the same as for s.36 requests, and will allow the proceedings to proceed more expeditiously. It will also allow better handling of parallel s.32 and 36 requests.

Extensions of time under s.223

S.223(4) has been amended to allow for advertisement of prescribed matters, no matter how long the extension is for. Similar amendments have been made to s.223(9)

For this purpose, the regulations have prescribed the payment of a continuation fee, or a renewal fee, in the grace period. At the same time the payment of those fees in the grace period has been removed from regulation 22.11(3), (4).

The effect of these changes is that an extension of the grace period can now be obtained to pay a continuation or renewal fee. However any such extension must be advertised for opposition purposes, and the protection and compensation provisions of Reg 22.21 apply. Consequently third parties are able to exploit a patent immediately after it has ceased.

Reg 22.11(1A) has been added to deal explicitly with the situation where a request is made to do a future act, and that request is opposed. The period of the extension must be extended to cover the time lost because of the opposition. Reg 22.2(2),and fee item 18, have been consequentially deleted. [Reg 22.11(1A), (1B)]

S.114(2)

This subsection [which relates to 'self-anticipation' through lack of inventive step in the event that new subject matter is added to a specification] has been redrafted and put into a new section [114A], to better set out its intent.

Withdrawals etc., just before OPI

Publication processes have a production lead time of several weeks. Removal of a document from the publication queue incurs significant costs and disruption. Accordingly a number of amendments have been made to restrict certain actions in the period of 3 weeks prior to the due date for publication. These are:

• S.143(1) and regulation 13.1A - withdrawal of an application;
• Reg 10.3 (5), (6) deletion of priority date; converting a complete application to a provisional application, or to an innovation patent; [Note: where OPI comes about solely by reason of acceptance [s49(5)(b)], there is no restriction on pre-acceptance amendments.]

Divisional applications

s.39 has been moved to a new part of the Act dealing with divisional applications. The only changes to s.39 are consequential upon replacement of the petty patent system with the innovation patent system. However, a new section has been provided to allow for divisionals from an Innovation Patent during its examination, and to ensure that such divisional applications cannot lead to the grant of a standard patent. [Chapter 6A, s.79B, 79C]

Duplicate Patent Deeds

There has been an on-going problem with the patent deed bearing incorrect information (typically, the exact name of the applicant) - despite that information being sent to applicants for confirmation prior to sealing. Under the previous regime, there was no scope for 're-issuing' the deed.

S.66 has been amended to allow the Commissioner to issue a 'duplicate' deed in such circumstances - providing the original deed is returned.

Changes in the Regulations

Nominated person

The regulations [Reg 3.1A] now provide that the applicant is taken to be the nominated person [as is the case for international applications, pursuant to reg 8.2(5).] Note that this change does not remove the legal concept of a nominated person.

As a consequence patent request forms should no longer identify a nominated person.If a newly filed request form identifies a nominated person different from the applicant, the identification of the nominated person will be of no effect. For those past applications where a different person was nominated, the application will continue to recognize that difference.

True copy requirements

The requirement for filing a true copy of a specification has been deleted. [Reg 3.2A(1)] Indeed, as the office's electronic systems are implemented, true copies will NOT be wanted.

Similarly, for amendments the number of copies required as been reduced. The requirements will be for the replacement page, and a marked-up copy. [Reg 10.1(2)]

Formality requirements - specifications

The requirements for documents filed electronically are that they be 'in the approved form'. [3rd schedule, clause 13.] The commissioner will advertise those requirements from time to time in the AOJP.

Previously the regulations have required every 5th line be numbered on each page. In recognition of developments with electronic filing an alternative has been provided, allowing for the numeration of each paragraph through the specification. [3rd schedule, clause 16.] It is envisaged that, depending on the document's electronic format, amendment by way of replacement paragraphs will be allowed.

Provision has been included for the Commissioner to raise the presence of 'scandalous' material in the specification as a formality issue. [Third schedule, item 14.]

The Atlas Copco mechanism for dealing with a filing by way of cross-reference has been codified to the extent necessary for the PLT requirements. [The commissioner will not be requiring a certified copy of the priority document. - see PLT Art 5(7), Rule 5(b)]

Filing of an application in a foreign language is allowed, consistent with PLT requirements - with an English text being required consequent upon the formality check.

When a formality objection is raised on a standard application, the time for overcoming the objection has been clarified compared to the previous provision - to be the later of the day of OPI, or three months from the direction. [R3.2A(3)(b)]

Filing date requirements

The regulations have been expanded to cover the PLT requirements and considerations relevant to according a filing date. [It may be noted that these provisions essentially protect the interests of filers - whether that be by way of ignorance of the requirements, or by way of difficulties/errors/omissions that adversely impact the filing. It would not be expected that regular users of the system would routinely rely on the new provisions.]

To obtain a filing date [Reg 3.5], the following is required:

• Name and address of applicant;
• An indication that a patent is being sought; and
• Something which, on the face of it, appears to be a description. For this purpose, a drawing will suffice.

The specification need not be in English in order to get a filing date - although a formality objection will arise. The application can be filed by way of cross-reference (Atlas Copco), but replacement text must be filed. [Reg 3.5(2)]

Regulation 3.5A includes provisions to deal with 'missing parts' of the description. Generally:

• incorporation of a missing part will result in a later filing date;
• a missing part that has been added can be removed, with reversion of the filing date to the original date; and
• the initial filing date can be maintained if the missing part was fully contained in the priority document.

Measuring time periods

The regulations include a new provision setting out how periods measured in months are to be computed, by way of reference to rule 80.2 of the PCT. This gives effect to the 'corresponding day' rule for determining when a period such as '1 month from 28 Feb' expires. [Reg 1.3(7)]

Regulations 13.4 and 6.11(3) have been amended to make clear that the period does not commence on the date of the report.

Fee payments

The details for all fee payments have been moved to the regulations. The regulations enable separation of fees from filing for all procedures other than the payment of continuation/renewal fees (where the only action to be done is the payment of the fee), and National Phase entry. With this separation, applicants will be able to file documents etc., and pay on invitation from the Commissioner.

The regulations provide for the consequence of non-payment of the invitation. Generally there will be a period of 1 month to pay; but there will be two months for an invitation for filing a patent application (as required by the PLT). Non-payment may result in lapsing of the application (in particular, for non-payment of the filing fee), or may result in a document or request being deemed not filed. For some actions (such as appearance at a hearing) payment must occur before the relevant act can occur. [Regs 22.2 to 22.2H]

S.27/28 notices - copies of documents

Only one copy of the documents (and translation if needed) is required with the section 27 notice, instead of two.

Note that for Petty Patents, the transitional provisions retain generally the regulations as before the commencement. That is, the requirement for two copies of material filed under s.28 for Petty Patents remains.

Oppositions

Reg. 5.5(4) has been amended to specifically provide for dismissal of an opposition when no statement of grounds and particulars has been filed.

Reg 5.3B has been added to explicitly allow for the situation where the right to oppose is transferred as part of the transfer of a business. [Compare s.53 of the Trade Marks Act.]

ReExamination

Reg. 9.2(4) - Commissioner now must not re-examine a complete specification if documents are not identified, their relevance stated or copies of documents are not provided. This decision was discretionary before amendment (c.f. "may" in old reg. 9.2(4)).

Amendments

Reg. 10.1(2)(e) - The location and nature of amendments must now be indicated in a form approved by the Commissioner. This is associated with the move to electronic document handling, where some forms of identification may be unsuitable (such as by using a 'highlighter' pen. Allowable forms will be advertised from time-to-time in the AOJP.

Reg. 10.2(1)(b) now includes specific reference to section 103 when assessing the allowability of amendments.

Examination - prior use

The Act has been amended to make it clearer that prior use is not considered in the ex parte environments of examination and re-examination - with consequential deletion of that restriction from the regulations.

PCT applications - early national phase entry

Where a PCT application is filed in the Australian Receiving Office, and national phase entry is requested without the PCT filing fees having been paid, the national phase entry fee will now include an amount equivalent to those unpaid PCT fees. [R22.2(4)(a)(ii)]

Section titles in the regulations

Previously, wherever the regulations referred to a provision of the Act, they would indicate the title of that provision. Consequent upon a change in drafting style, almost all of those titles have been deleted.

Transitional provisions

Petty Patents generally

For existing petty patents and petty patent applications, the Act and Regulations in force as on 23rd May [the 'old law']will continue to apply. [Schedule 2, section 2(1) of the Patents Amendment (Innovation Patent) Act]

Some exceptions to this apply. Notably:

• Divisional applications under s.39(1) or (2) of the old law cannot be made for a petty patent. The reference to petty patent is replaced with a reference to Innovation patent, as the case requires [s2(5) & (6) of Schedule 2]
• Similar arrangements apply to applications made under sections 33 to 36 of the old law.
• An application for a petty patent can be converted to an application for an innovation patent, at any time up to acceptance. [s3 of Schedule 2].

PCT applications designating AU as a Petty Patent

To protect PCT applicants who file a PCT application after the commencement, and who designate Australia for a Petty Patent, the regulations provide that the application will be treated as an application for a standard patent. [Reg 23.34]

Fees for Petty Patents

For Petty Patents / Applications, the relevant fee schedule is that of the 'old Act' which is retained by way of the transitional provisions of the Act. As a consequence, the fee items for converting a petty patent application to a standard patent application, and for filing an extension of term of the petty patent, remain unchanged. However the amended Act, and in particular reg 23.35, governs the fee payment mechanism.

Note that there is no fee for converting a petty patent application to an application for an Innovation Patent.

Examination of Innovation Patents that were applications for petty patents

Where a petty patent application is converted to an application for an Innovation patent, the Commissioner is not required to have regard to any considerations done under s.50 of the old Act. [Regulation 23.33] (Consequently, requests for waiver of part of the fee for the examination of the Innovation Patent - on the basis that it was considered by the Commissioner when it was a Petty Patent application - will not be entertained.)

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OFFICIAL NOTICE

Changes to PCT Fees-exchange rates

The exchange rate between the Swiss franc (CHF) and the Australian Dollar (AUD) has been, for more than 30 consecutive days, more than 10 percent higher than the exchange rate used for establishing the present equivalent amounts of the PCT fees in AUD.

In accordance with the directives adopted by the PCT Assembly at its twenty-fourth session (September 16 to October 1, 1997) and under PCT rules 15.2(d), 16.1(d) and 57.2(e), the following fee changes take effect from June 1, 2001. Patent Regulations 22.4(2), (3) and (4) apply.

Fees collected on behalf of the International Bureau of the World Intellectual Property Organisation

Basic fee*                                                 650CHF (AU$759)
plus for each page in excess of                 30 15CHF (AU$18)
Gene Sequence listing in Machine
Readable Form
-as part of Specification                             6000CHF (AU$7200)
-as Search Tool only, with paper version   Cost included in page                                                                   count
Designation fee per country*                  140CHF (AU$164)
          (Max. fee 840CHF (AU$984) for 6 or more designations)
Preliminary handling fee                          233CHF (AU$272)

*Any application filed which meets the administrative requirements for filing associated with WIPO's PCT-EASY software is subject to a reduction of $AU234 from the total amount payable for filing the international application.

For PCT applications filed before 1 June 2001, with fee payment occurring on or after 1 June 2001, attention is drawn to Rule 15.4 and 15.2(c) of the PCT.

Enquiries

Steve Clark                02 6283 2224
Dave Herald               02 6283 2324

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OFFICIAL NOTICE

Patents: Amendment of the Manual of Practice and Procedure

In March 2001 amendments relating to the following were made to the Manual of Practice and Procedure Volume 1 - International.

The principal changes relate to:

* Changes to the Singapore examination practice regarding the requesting of translations of documents which are cited in the search report upon which examination is to be based but which are not in the English, French or German language, particularly regarding Japanese patent documents (paras 4.5.7, 4.5.40).

* Changes to the arrangements for filing nucleotide and/or amino acid sequence listings resulting from the coming into effect of new Part 8 to the Administrative Instructions on 11 January 2001 (para 1.17).

Updating the Administrative Instructions (Part 9).

Other changes relate to minor clarifications, elaborations, updates and correction of typographical errors.

The amendment action is shown in Part 10 at 10.Amend. Action. 20

The resulting composition will be as shown in Part 10 at 10.Amend. Status

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OFFICIAL NOTICE

S.223(2) applications for more than 3 months
Change of Practice

Since at least September 1981, the practice of the Commissioner with regard to requests under s.223(2) for an extension of more than 3 months, has been to review the request before advertising it under s.223(4). The Commissioner would ask for further justification where the request appeared to be deficient, and would proceed to refuse the application if she thought that no extension was possible. This practice ensured that the request was in good order before advertisement occurred, thereby ensuring that any opposition under s.223(6) would be initiated in the full knowledge of the basis of the extension.

This practice was the subject of a recent application to the Administrative Appeals Tribunal for review of a decision of the Commissioner of Patents.

This issue was in fact considered (in the context of s.160 of the Patents Act 1952) by the full bench of the Federal Court in Deputy Commissioner of Patents v Board of Control of Michigan Technological University (1980) AOJP 3137 at 3145. In that decision, Franki J (Smithers and Keely JJ concurring) stated:

"the requirement with regard to advertising cannot depend upon the view the Commissioner takes about the merits of the application or about his jurisdiction to determine it so long as it is clearly an application purporting to be made under s.160(2)."

If advertisement "cannot depend upon the view the Commissioner takes about the merits of the application", there is no purpose to be served by the Commissioner reviewing an application before advertisement - as the advertisement must proceed whatever the view of the Commissioner about the merits of the application. Consequently it is clear that the past practice of the Commissioner has been in error.

Effective immediately, the requirements of the legislation with regard to the advertisement under s.223(4) will be strictly applied. That is, if an application under s.223(2) is filed requesting an extension of time for more than 3 months, it will be advertised for opposition purposes without any consideration by the Commissioner of the merits of the request.

Practical effects of the change in practice.

There are several issues that practitioners need to be aware of, consequent upon this change in practice.

1. No fees.
If an application is filed without the relevant s.223 request fee being paid, or with that fee underpaid, the provisions of s.227 will apply. In particular, if the fee is ultimately not paid, the application is taken not to have been filed. Accordingly, the Commissioner will not advertise the extension until the relevant fee has been paid (in full). [Note that, where the s.223 request is to extend the time to pay a fee, this does not apply with respect to the quantum of that fee; it only applies with respect to the s.223 application fee per se.]

2. No declaration.
A significant number of s.223 requests are currently filed with no declaration [Reg 22.11(1)], with promises that a declaration 'will be filed shortly'. The requirement of a declaration is a formality issue, that does not detract from the existence of an application under s.223(2). Accordingly, an application under s.223(2) will be advertised under s.223(4) notwithstanding the absence of a declaration. Note that, in distinction from past practice, the Commissioner will not remind the applicant to file the declaration.

3. Request inadequate for its intended purpose.
Advertisement under s.223(4) cannot depend upon whether the 'act' in which the request is in respect of, has been effectively done within the extended period sought by the request.

Currently a significant number of requests are received which seek an extension in respect of the wrong 'act' not having been done. Such defects will not be considered prior to advertisement under s.223(4), and may require a completely new s.223 request be filed in respect of the correct error or omission.

Similarly, for an extension of time to pay a fee (such as a renewal fee), advertisement under s.223(4) cannot depend upon an assessment of whether the fee was in fact (fully) paid within the extended period. If a fee shortfall is paid at a later date outside the period sought to be extended, there will be a need to file a completely new s.223 request to cover the period from the originally due date to the date the fee was in fact paid in full. [Note that s.227 does not apply to the fee payment that is the subject of a s.223 request - it only applies in respect of the s.223 request fee per se.]

4. Oppositions.
If an opposition is filed, the Commissioner will proceed to consider the application solely in the context of that opposition (ie. she will not conduct any preliminary assessment of whether the request is in respect of the correct period, or correct action, or has any justification.) If no declaration in support of the application was on file at the time the opposition was filed, or the substantive justification for the extension only appears during the proceedings (such as in evidence-in-answer), the Commissioner will entertain applications to vary the award of costs, including the award of actual costs, depending on the facts of the case.

5. If no Opposition.
If no opposition is filed (or any opposition is withdrawn), the Commissioner will proceed to consider the application. In the absence of any declaration in support of the request, or if the Commissioner considers the extension is not justified, the Commissioner will advise the applicant of why she considers the application lacks justification, and will set the matter for hearing vis-à-vis refusal of the application. The applicant will be entitled to file further material in support of the request prior to the hearing. If such material is filed with sufficient time before the hearing for the Commissioner to consider it - and she is satisfied on the basis of that material that the extension is justified - she will cancel the hearing.

6. Waiver/refund of fees.
Under the past practice of the Commissioner, applicants with insufficient justification frequently withdrew the application before advertisement under s.223(4). In such cases the Commissioner was prepared to waive a large component of the s.223 application fee paid under fee item 17 (having regard to the fact of withdrawal occurring before advertisement.) Since such applications will now proceed to advertisement upon filing the application, the past practice regarding waiver of the s.223 application fee has no application; that is, partial refunds upon withdrawal of s.223 requests will no longer be available.

7. Pending requests.
There are many pending requests where the Commissioner has asked for further information to support the request, or where a declaration in support has not been filed. All these applications will be advertised under s.223(4) as soon as possible, irrespective of whether the applicant has responded to the Commissioner's request for more information, or for a declaration. The Commissioner will not give any further consideration to those applications until the respective period for filing an opposition has expired. Thereafter, the Commissioner will consider the application in accordance with the preceding paragraphs.

8. Common deficiencies.
Common deficiencies that occur in s.223 requests are:

• The request is for the incorrect period - particularly in respect of applications to enter the national phase;
• The request is in respect of the incorrect action - particularly in respect of filing a divisional application; and in respect of correcting errors during the national phase that arose during the international phase of a PCT application;
• The request is in respect of a matter that cannot be extended [eg requests to extend the time for filing a deposit of a microorganism; requests to file a first-instance application; requests in respect of matters where the Commissioner has become functus officio {such as a request filed after grant to extend the time for filing a notice of opposition.}]
• The declaration is of low evidentiary value by relying upon hearsay ["I declare that the {foreign} associate has told me that his client has told him that….] - particularly in situations where there is no apparent reason (other than mere inconvenience) why the person having the direct knowledge of the circumstances cannot provide a declaration. This is to be contrasted with the situation where an error was committed "by person X, formerly of our employ", where hearsay evidence may be quite appropriate.
• Declarations that apparently provide 'selective' extracts of supporting documents whilst avoiding documents that may be less favorable to their case. [As a particular subset of this situation - declarations which refer or allude to documents as supporting their case, but fail to provide copies of them.]

The Commissioner will not give any consideration to such deficiencies until the request falls to be determined subsequent to advertisement under s.223(4). In all likelihood, extensions for the wrong period, or for the wrong matter, will need to be rectified by way of a completely new application - so that the advertisement under s.223(4) relates to the actual matter the subject of the extension. Alternatively, amendment under s.104 [with consequent advertisement for opposition purposes pursuant to regulation 10.5(2)(b)(ii)] may be possible - although consideration would have to be given as to whether the original advertisement under s.223(4) was adequate for the request as amended [particularly having regard to the rights that arise consequential upon advertisement under 223(4).]

Patents Amendment (Innovation Patents) Act 2000

This amending Act comes into force on 24 May 2001. It includes amendments to s.223(4) [and (9)] to provide for the advertisement of an extension of time for doing a prescribed act in prescribed circumstances - whatever the length of the extension. In the event that regulations are made to prescribe matters for the purpose of this new provision, the Commissioner will advertise (and otherwise deal with) them in the same manner as for applications for an extension of more than 3 months.

Other matters

This change of practice relates solely to s.223(2) requests that must be advertised under s.223(4). In particular, the Commissioner's practice for dealing with:

• s.223(1) matters
• s.223(1A) matters; and
• s.223(2) requests that are not advertised under s.223(4)

will continue without change.

From time-to-time fee payments arise during the period from filing a request to its allowance - particularly renewal fees. This is particularly the case if the request is opposed. Applicants are reminded to pay any such subsequently arising renewal fees as they fall due on the presumption that the extension will be granted - to avoid the situation where an extension is granted but the patent has ceased through the failure to timely pay the subsequent renewal fee.

Enquiries concerning this change of practice
Dave Herald 02 6283 2324
Mark Cox 02 6283 2082

Amendments effective from 5 February 2001

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OFFICIAL NOTICE

Filing of International Applications containing Sequence Listings

With effect from January 11, 2001, the Administrative Instructions under the PCT have been amended to allow the sequence listing part of an International Application to be filed on an electronic medium in the computer readable form referred to in Annex C of the Administrative Instructions. The medium must be one acceptable to the relevant Receiving Office.

For the purpose of this new provision, the Australian Patent Office will accept the filing of such sequence listing parts on a standard (1S09660) CD-ROM or CD-R.

If this option is used, the filing fee is based on:

(i) the usual fee based on the number of pages filed on paper; together with
(ii) an amount equal to 400 times the fee per sheet as referred to in item 1(b) of the schedule of Fees to the PCT, regardless of the actual length of the sequence listing part.

That is, a fee saving at filing will occur if the sequence listing is greater than 400 pages.

If the specification comprises a sequence listing on a CD-ROM or CD-R, there is no requirement to supply the listing in printed form during the international phase of the application. [However, Designated Offices that do not accept the filing of sequences in computer readable form may, for the purposes of the national phase, require a copy of the sequence on paper.]

The portions of the new Part 8 of the Administrative Instructions of relevance to applicants are reproduced hereafter. It should also be noted that Rule 89bis will also enter into force on January 11, 2001 - to the extent that the operation of that Rule is given effect in the modifications.

Note that where the sequence listing part of a specification is filed under this new provision, that sequence listing will also fulfil the requirements of Rule 13ter. l(a)(ii) [which relates to the requirement of a computer-readable form of the sequence being supplied for search purposes.]

PART 8: [NEW]
INSTRUCTIONS RELATING TO INTERNATIONAL APPLICATIONS CONTAINING LARGE NUCLEOTIDE AND/OR AMINO ACID SEQUENCE LISTINGS

Section 801 [NEW]
Filing of International Applications Containing Sequence Listings

(a) Pursuant to Rules 89bis and 89ter, where an international application contains disclosure of one or more nucleotide and/or amino acid sequence listings ("sequence listings"), the receiving Office may, if it is prepared to do so, accept that the sequence listing part of the description, as referred to in Rule 5.2(a), be filed, at the option of the applicant:

(i) only on an electronic medium in the computer readable form referred to in Annex C; or

(ii) both on an electronic medium in that computer readable form and on paper in the written form referred to in Annex C;

provided that the other elements of the international application are filed as otherwise provided for under the Regulations and these Instructions.

(b) Any receiving Office which is prepared to accept the filing in computer readable form of the sequence listing part of international applications under paragraph (a) shall notify the International Bureau accordingly. The notification shall specify the electronic media on which the receiving Office will accept such filings. The International Bureau shall promptly publish any such information in the Gazette.

(c) A receiving Office which has not made a notification under paragraph (b) may nevertheless decide in a particular case to accept an international application the sequence listing part of which is filed with it under paragraph (a).

(d) Where the sequence listing part is filed in computer readable form under paragraph (a) but not on an electronic medium specified by the receiving Office under paragraph (b), that Office shall, under Article 14(1)(a)(v), invite the applicant to furnish to it a replacement sequence listing part on an electronic medium specified under paragraph (b).

(e) Where an international application containing a sequence listing part in computer readable form is filed under paragraph (a) with a receiving Office which is not prepared, under paragraph (b) or (c), to accept such filings, Section 333(b) and (c) shall apply.

Section 802 [NEW] Format and Identification Requirements Relating to International Applications Containing Sequence Listings

(a) Paragraphs 40 to 45 of Annex C shall apply mutatis mutandis to the sequence listing part of an international application filed in computer readable form. In addition, the label provided for in paragraph 44 of Annex C shall also include, as the case may be, the following indications:

(i) that the sequence listing part is filed under Section 801(a);

(ii) where the sequence listing part in computer readable form is contained on more than one electronic carrier, the numbering of each such carrier (for example, "DISK 1/3," "DISK 2/3," "DISK 3/3");

(iii) where more than one copy of the sequence listing part in computer readable form has been filed, the numbering of each copy (for example, "COPY 1," "COPY 2," "COPY 3").

(b) Where any correction under Rule 26.3, any rectification of an obvious error under Rule 91, or any amendment under Article 34 is submitted in respect of the sequence listing part of an international application filed, under Section 801(a)(i) or (ii), in computer readable form, a replacement sequence listing part in computer readable form containing the entire sequence listing part with the relevant correction, rectification or amendment shall be furnished and the label referred to in paragraph (a) shall be marked accordingly (for example, "SUBMITTED FOR CORRECTION," "SUBMITTED FOR RECTIFICATION," "SUBMITTED FOR AMENDMENT"). Where the sequence listing part was filed both in computer readable form and in written form under Section 801(a)(ii), replacement sheets containing the correction, rectification or amendment in question shall also be submitted in written form.

Section 803 [NEW] Calculation of Basic Fee for International Applications Containing Sequence Listings

Where the sequence listing part of an international application is filed in electronic form under Section 801(a), the basic fee payable in respect of that application shall comprise the following two components:

(i) a basic component calculated as provided in the Schedule of Fees in respect of all pages filed on paper (that is, all pages of the request, description (excluding the sequence listing part if also filed on paper), claims, abstract and drawings), and

(ii) an additional component, in respect of the sequence listing part, equal to 400 times the fee per sheet as referred to in item 1 (b) of the Schedule of Fees, regardless of the actual length of the sequence listing part filed in computer readable form and regardless of the fact that the sequence listing part may have been filed both in written form and in computer readable form.

Section 804 [NEW] Preparation, Identification and Transmittal of Copies of International Applications Containing Sequence Listings

(a) Where the sequence listing part of an international application is filed only in computer readable form under Section 801(a)(i), the record copy for the purposes of Article 12 shall consist of those elements of the international application filed on paper together with the sequence listing part filed in computer readable form.

(b) Where the sequence listing part of an international application is filed both in computer readable form and in written form under Section 801(a)(ii), the record copy for the purposes of Article 12 shall consist of all the elements of the international application filed on paper, including the sequence listing part in written form.

(c) Where the sequence listing part of an international application is filed in computer readable form under Section 801(a)(i) or (ii) in less than the number of copies required for the purposes of this Section, the receiving Office shall either:

(i) promptly prepare any additional copies required, in which case it shall have the right to fix a fee for performing that task and to collect such fee from the applicant; or

(ii) invite the applicant to promptly furnish the additional number of copies required, accompanied by a statement that the sequence listing part in computer readable form contained in those copies is identical to the sequence listing part in computer readable form as filed;

provided that, where that sequence listing part was also filed in written form under Section 801(a)(ii), the receiving Office shall not, notwithstanding Rule 11.1(b), require the applicant to file additional copies of the sequence listing part in written form.

(d) …
(e) …
(f) …

Section 805 [NEW] Publication and Communication of International Applications Containing Sequence Listings; Copies; Priority Documents

(a) Notwithstanding Section 406, an international application containing a sequence listing part may be published under Article 21, in whole or in part, in electronic form as determined by the Director General.

(b) Paragraph (a) shall apply mutatis mutandis in relation to:

(i) the communication of an international application under Article 20;

(ii) the furnishing of copies of an international application under Rules 87 and 94.1;

(iii) the furnishing under Rule 17.1, as a priority document, of a copy of an international application containing a sequence listing part filed under Section 801(a);

(iv) the furnishing under Rules 17.2 and 66.7 of copies of a priority document.

Section 806 [NEW]
Sequence Listings for Designated Office

Where the sequence listing part of an international application was filed only in computer readable form under Section 801(a)(i), any designated Office which does not accept the filing of sequence listings in computer readable form may require that the applicant furnish to it, for the purposes of the national phase, a copy of such sequence listing part on paper in written form complying with Annex C and accompanied by a statement that the sequence listing part in written form is identical to the sequence listing part in computer readable form.

Effective from 1 January 2001

OFFICIAL NOTICE

National Applications: Changed requirements for filing Priority Documents and translations

The requirements under the Patent Regulations to file priority documents, and translations of priority documents, have been amended - see regulations 1.6, 3.1, and 8.6(2). These amendments in part give effect to Rule 51bis.1(e) of the PCT, and are consistent with Rule 4(4) of the Patent Law Treaty. The basic effect of these amendments is as follows:

1. Translations of priority documents, for both PCT applications and Convention applications, will not normally be required to be filed.

2. Certified copies of priority documents under rule 17.1(a) or (b) for PCT applications, will not normally be required to be on file.

3. A certified copy of the priority document will still be required to be filed before acceptance for Convention applications (ie there is no change to the previous requirements for non-PCT applications.)

For translations of priority documents under paragraph (1) above, the Commissioner will only request the applicant/patentee to file these documents where there is a validity-related issue in which determination of the correct priority date is, or is likely to be, important. Examples of such circumstances are:

* In examination or re-examination, where there is a citation published after the priority date and before the filing date or a whole of contents citation with a priority date after the priority date of the case being examined;

* In opposition, upon filing a notice of opposition.

It is not expected that the Commissioner will require translations to be filed on the request of third parties.

For priority documents under paragraph (2) above, the Commissioner will need these documents where third parties request the document or in the examples listed above for paragraph (1). However, as such documents will normally be available from WIPO, the Commissioner will only require the applicant/patentee to file these documents if they are not available from WIPO.

Where the Commissioner requires a translation of a priority document [paragraph (1)], or a priority document for a PCT application [paragraph (2)], the Commissioner will request the applicant/patentee to file the relevant document. If the foreign language priority document is available to the Commissioner (or it is accessible through WIPO) at the time when priority date first becomes an issue, the Commissioner will initially assess the foreign language document before determining whether a translation should be requested. However, if the priority document is not available for the Commissioner to assess at that time, then the Commissioner will request the translation.

If the request occurs before acceptance, the applicant has until acceptance to provide the documents. If the request is issued less than 5 months before the due date for acceptance, the time for acceptance is extended until 5 months after the request is issued - allowing time for the document to be filed, and the examination completed [see reg 13.4(1)(k)].

If the request occurs after acceptance, the applicant/patentee has three months to provide the documents [see regulation 1.6(1) and (1A)].

If the documents are not provided within these time limits, then section 8 of the Act applies - namely, account must not be taken of the disclosure in the basic application for the purpose of the Act. In these circumstances there will effectively be a loss of priority date.

If the applicant/patentee experiences difficulties in providing such documents, the provisions of section 223(2) of the Act are available. In the case of the priority document of a PCT application, section 223(1A) may be available - provided the applicant/patentee can show that they had complied with the requirements of Rule 17.1(a) or (b) of the PCT [including the payment of any requisite fees before that office.]

Transitional arrangements

These changed requirements for priority documents are of immediate effect. For applications pending, where the Commissioner has objected to the absence of a priority document, or translation of a priority document, that document or translation will only be required in situations where the determination of the correct priority date is an issue in the application. The objection will be reviewed at further reports when an applicant has responded to an examiner's report. If no response from the applicant is received, the application will lapse in the usual way (i.e. 21 months from the date of first report).

If the examiner concludes that the priority document or translation is necessary, they will request the document from the applicant who will then have 3 months to provide the document. Otherwise, the objection will be withdrawn. Note that the extra time for acceptance provided for under regulation 13.4(1)(k) does NOT apply to existing objections requiring the furnishing of priority documents, but does apply to any new requests for those documents (including any relevant objection that is maintained).

Enquiries:
Dave Herald 02 6283 2324
Karen Ayers 02 6283 2082

Amendments effective from 1 January 2001

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Effective 1 January 2001, the fees for filing a PCT application have been amended so that the number of designations before which the designation fee becomes a fixed amount, has been reduced from 8 countries to 6 countries. Consequently, the maximum designation fee will be SF840. Currently, the Commissioner deems this to be equivalent to $864 Australian dollars.

For PCT applications filed before 1 January 2001, with fee payment occurring after 1 January 2001, attention is drawn to Rule 15.4 and 15.2(c) of the PCT.

Enquiries:
Steve Clarke 02 6283 2224
Dave Herald 02 62832324

Amendments effective from 1 January 2001

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OFFICIAL NOTICE

National Applications: Changes affecting Patent Oppositions

a) Amending the Statement of Grounds and Particulars

Regulation 5.9(2)(e) has been deleted - which removes the requirement that an amendment to the Statement of Grounds and Particulars is not allowable if the Commissioner reasonably believes that a person will be unduly prejudiced by the amendment.

Practitioners are advised that while this change will result in amendments of the Statement being more readily obtainable, the Commissioner continues to expect opponents to establish their grounds and particulars of the opposition when the Statement is originally served. Extensions of time under regulation 5.10 (2) to file evidence for the purpose of establishing a better basis for opposing an application are unlikely to receive favourable consideration by the Commissioner.

This change to the regulation is of immediate effect, and applies to all existing oppositions.

Requests under Regulation 5.10(2) for an extension of time.

Regulation 5.10 has been amended to include the requirement that a request for an extension of time under 5.10(2) must be served on the other party in the opposition. Note that Regulation 22.4 requires the person serving the document to advise the Commissioner of the date of service as soon as practicable.

For the purposes of Regulation 5.10(5)(a), the Commissioner will normally take advice of service as providing the basis to be satisfied that the other party has been notified by the application. For the purpose of Regulation 5.10(5)(c)(i), the Commissioner will normally allow a period of 10 days from the date of service for the party served to notify the Commissioner of any objection to the extension. In the absence of any such notification, the Commissioner will proceed to determine the request.

The Commissioner's current practice for requests under regulation 5.10(2) is to advise the parties of the request and to provide a nominal hearing date in the event of an objection. As from 1 January 2001, this practice will cease. Practitioners are advised to monitor requests which have been served on them and to advise the Commissioner of any objection within 10 days of the date of service. In the event of an objection being filed, the Commissioner will proceed to set the matter for hearing as soon as possible. The Commissioner will not be sympathetic to any delay in hearing the matter without very strong justification.

Comments on amendments under s.104

Where an application is opposed, and the applicant seeks amendment under s.104, Regulation 10.2(6) provides the opponent with an opportunity to comment on the proposed amendments.

Regulation 10.2(7) sets time limits for commenting on those amendments. The period has now been amended from 2 months to:

21 days, or any longer period up to 2 months allowed by the Commissioner.

The practice of the Commissioner will generally be as follows:

* · For the first statement of proposed amendments, to allow a period of 2 months - unless it is readily apparent that the amendments are minor; and

* · For subsequent statements of proposed amendments, to allow a period of 21 days - unless it is readily apparent that the amendments are major.

If a period of 21 days is allowed, the opponent may seek further time (up to the maximum of 2 months from the initial invitation) to comment. Any such request should be accompanied by reasons, and should not be taken as being automatically available.

Enquiries
Karen Ayers 02 6283 2082
Dave Herald 02 6283 2324

Amendments effective from 1 January 2001

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OFFICIAL NOTICE

National Applications: Changed requirements for Obtaining Filing Dates

The regulations have been amended to delete regulation 3.5(3). This means that documents filed in the Patent Office or sub-office after close of business will no longer receive a date of filing based on when the Office or State Office was last open for business.

Effective immediately, the date of filing will now be the date that the Patent Office or sub-office receives the documents. This means that documents filed by facsimile after close of business of the Patent Office or sub-office but before midnight in the time zone of the receiving facsimile will still be entitled to the earlier filing date. However, documents received after midnight will have a later filing date based on the actual date that the document was received.

Note that section 36 of the Acts Interpretation Act [1901] still continues to apply with regard to calculation of time periods. That is, if the end of a period for filing a document occurs on a Saturday, Sunday, Bank Holiday or Public Holiday, the period expires on the first day that is not a Saturday, Sunday, Bank Holiday or Public Holiday. Consequently, if a period is due to expire on a Sunday, it in fact expires on the Monday. Please note, however, that if the relevant documents are filed by facsimile on the Sunday, they will receive Sunday's date as the date of filing and not Friday (as was previously the case).

Enquiries
Dave Herald 02 6283 2324
Karen Ayers 02 6283 2082

Amendments effective from 1 January 2001

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Under paragraph 12 of Schedule 3 applicants may file that part of a specification containing an amino acid sequence or nucleotide sequence on a compact disk or by other electronic means approved by the Commissioner in a format approved by the Commissioner. The format approved by the Commissioner is defined in the next three pages.

NOTE. Apart from the requirements for National Phase Entry, the Commissioner has only approved filing using a CD-ROM, and in the specific format specified.

Filing fees

If a complete specification is filed using this option, the filing fee will be computed as:

Consequently there is a reduction in the filing fee if the sequence listing part of a specification is in excess of 85 pages, if it is submitted on a CD instead of on paper.

National Phase Entry fees

The fee for national phase entry will be computed on the same basis as above - provided the sequence listing part of the specification is available within the Patent Office in a machine-readable form. It is expected that the sequence listing part will usually be so available.

Requirements for the Nucleotide or Amino Acid Sequences

The format for nucleotide or amino acid sequences filed on compact disk, that the Commissioner approves is a format complying with the standard provided for in Annex C of the Administrative Instructions of the Patent Cooperation Treaty (PCT). The requirements for the presentation of nucleotide and/or amino acid sequence listings, and other identifying data, are quite detailed. The Administrative Instructions (including the Annexes) are included in Volume 1 Part 9 of the Manual of Practice and Procedure - with Annex C starting at page 9.62. They are also available on-line, with Annex C being located at:

http://www.wipo.org/eng/pct/texts/page/wopca023.htm#:C

To assist applicants in preparing sequence listing and identifying data in the format specified under Annex C of the Administrative Instructions, the USPTO has developed the PatentIn software application. PatentIn generates a text file of the sequence listing and identifying data. PatentIn is freely downloadable from the USPTO and EPO web sites:

http://www.uspto.gov http://www.european-patent-office.org/filingsoft/index.htm

The information material about PatentIn on these web sites should be read.

Requirements for providing the sequences on compact disk

Paragraphs 41 - 46 of Annex C of the Administrative Instructions of the PCT set out the requirements for providing the sequence listing and ident