15 December 2015

The Commissioner of Patents has established a revised examination practice taking into account the High Court's decision in D'Arcy v Myriad Genetics Inc [2015] HCA 35.

This follows public consultation on a draft published on 16 October 2015. Please note that the practice reflects the law as understood by the Commissioner of Patents to apply to the examination of patents and is intended to inform examiners pending the inclusion of guidance in the Manual of Practice and Procedure.

Examination practice

The Commissioner has undertaken a consultation process, considered the feedback received, and finalised the examination practice:

Persons concerned with the validity of any particular patent or application in light of the High Court's decision are advised to seek independent legal advice.

Decisions made by the Commissioner, whether to accept or refuse an application or otherwise, may be challenged in proceedings before the Patent Office and ultimately by appeal or judicial review in the Federal Court.

This practice applies immediately to pending applications and changes to the Manual of Practice and Procedure will be made on 11 January 2016.

The Commissioner welcomes feedback on her practice and procedures. Feedback can be provided through our feedback form at any time.