Application of the Patents Act where filed documents are marked Confidential or where requests are made for filed documents not to be OPI or to be deleted or redacted.
It has become common for correspondence filed with IP Australia related to patents or patent applications to be labelled as confidential, particularly in the context of patent oppositions. Occasionally, requests are made to the Commissioner to destroy or redact filed documents on the same basis.
Applicants, patent attorneys and solicitors filing correspondence with IP Australia are reminded that, under Chapter 4 of the Act, documents filed for a patent or patent application generally become open to public inspection (OPI). In many cases correspondence will be available to the public from IP Australia's web page within 24 hours of it being filed. Consequently, the marking of correspondence as confidential does not have any effect on the disclosure of that correspondence to other parties under the Patents Act.
IP Australia is also subject to the Archives Act 1983 under which the destruction or alteration of a Commonwealth record is an offence. Therefore requests for the Commissioner to delete or redact documents that have become part of a Commonwealth record, including documents filed in relation to patents and patent applications, will be refused.
Parties therefore need to carefully consider the nature of documents filed for the purpose of the Act in the expectation that they will become publicly available and in most cases published on the internet.
Exceptions to the general rule apply under regulations 4.3 and 4.4 where:
- documents are privileged from production in legal proceedings on the grounds of legal professional privilege;
- documents are subject to an order of a court or tribunal that prohibits disclosure; or
- documents are subject to an order of the Commissioner that they should not be OPI.
In relation to the third point please note that:
1. The Commissioner will order that a document not be OPI only if there are reasonable grounds for doing so. This may be the case where the information contains sensitive personal information, or disclosure risks some significant harm, including commercial harm, being done to the interests of a person concerned - See the Patent Office Manual of Practice and Procedure Part 3.13.
2. It is insufficient to merely assert that a document contains information that is commercial in confidence and that it should therefore not be OPI. Substantive reasons must be given as to why disclosure of the information will be harmful and the Commissioner may require evidence to support the request.
3. The Commissioner may direct that a document be not-OPI whether or not it has previously become OPI under the legislation. Where appropriate a direction that a document be not-OPI may be revoked either following a request or at the initiative of the Commissioner. The Commissioner will not proceed without inviting submissions from the persons concerned.
4. Parties intending to file sensitive information should request an order under regulation 4.3(2)(b) before the document is filed. The request should set out the nature of the documents and the reasons they should not be made publicly available. If an order is made, the Commissioner will indicate means by which the document can be filed to ensure it does not become OPI. If for some reason a request is made on or after the date the document is filed, the Commissioner will usually make an interim order while the request is being considered.
5. Decisions of the Commissioner made under subregulation 4.3(2)(b) are subject to AAT review pursuant to subregulation 22.26(2)(iia).
6. Where the Commissioner has directed that a document be not-OPI and the sensitive information forms a small or incidental part of the document, the Commissioner may request that a further copy of the document be provided with the sensitive information redacted or, alternatively, IP Australia may make a redacted copy. The redacted version will then be associated with the application or patent and become OPI.
7. A document that is not OPI may be subject to inspection by another party at the direction of the Commissioner. This would generally not occur unless the person who filed the document has been given the opportunity to be heard. If inspection is allowed, it is normally on the condition that the inspecting party give an undertaking as to confidentiality.
Queries: Philip Spann
Assistant General Manager
Patents and Plant Breeders Rights Group
+61 2 6283 2348
Contact: IP Australia
Phone: 1300 651 010