Australian information Disclosure Requirements Amended

By Paul Savage and Kristian Robinson

Amendments to the Australian patent regulations, which were published on 14 August 2003, have significantly reduced the disclosure requirements for patent applicants in Australia. The regulations will come into force on 26 August 2003.

The regulations now require that only documentary searches for corresponding applications that are conducted by, or on behalf of, a foreign patent office need to be filed for Australian patent applications. Furthermore, it has now been settled that the following search results will be excluded from the disclosure requirements under the new regulations:

• search reports that do not cite any documents
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• International Search Reports of PCT applications and any additional search conducted during international preliminary examination, and

• search results of divisional applications if the search results of the parent application have already been filed with the Australian Patent Office (APO).

Under the former regulations, in addition to providing search results conducted by foreign patent offices, applicants for a standard patent were required to provide the Commissioner of Patents with any search results carried out by, or on behalf of, the applicant and the applicant's predecessor in title. Accordingly, the former legislation placed a substantial burden on Australian patent applicants to ensure that the results of all searches were submitted to the APO. The new regulations have lifted that burden somewhat because they have limited the types of search results that must be disclosed by applicants. However, the new regulations have introduced some additional procedures, which are summarised below.

For standard patents, applicants will be required to file the results of documentary searches by the latest of:

• the day six months from the day that the search is completed

• the day six months after the applicant asks for examination, or

• 1 February 2004.

In relation to the first point above, the date that a search is defined as being 'completed' is taken to be the earliest of:

• the date mentioned in the report as the date that the report has issued

• the date mentioned in the report as the date that the report was completed, and

• the date that the search results were issued to the applicant or patentee by the foreign patent office.

The regulations in connection with time limits for innovation patents have not been amended. For innovation patents, the search results must be filed at the time of requesting examination (the deadline will vary depending on whether the patentee, the Commissioner of Patents or a third party requests examination), or within three months from when the search was completed, whichever is the later date.

It is possible for an applicant to apply for an extension of time to submit search results if the deadline for submitting search results is missed. However, an application for an extension of time will incur a fee and must be made within three months from when a Notice of Acceptance is published in the Official Journal of Patents.

To satisfy the formal requirements for disclosing search results, applicants are required to submit either a list of documents cited by the foreign patent office or a copy of the search report issued by the foreign patent office. In relation to submitting lists of documents, for search results that are cited by the UK and European Patent Offices, applicants must also list the symbols used by the respective offices to indicate the relevance of the cited documents.

Clearly, the new regulations will require a substantial amount of work to implement procedures for compliance and our firm is currently updating our electronic surveillance records to reflect the changes. We recommend that you contact your Australian associates to ensure that your clients will meet the requirements of the new regulations. Of course, please do not hesitate to contact us if you need any assistance or if you have any questions with regard to the new disclosure requirements in Australia.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.