is not open for public inspection (OPI) even though other documents in relation to an application are OPI under the legislation. This includes the specification of an associated provisional application but not the specification of the complete application which is specified explicitly in section 55 rather being prescribed under reg 4.3.

When will the Commissioner direct that a document is not OPI

The Commissioner may direct that a document (other than the complete specification) is not-OPI if she or he has reasonable grounds for believing that it should not be OPI. In applying this provision the Commissioner must take into account the purpose of the Act and the legislative scheme which ensures that, with few exceptions, documents filed in relation to a patent application are made available to the public after 18 months from the priority date. This is to ensure that the public disclosure of the invention that balances the grant of a patent is achieved, as well making available to the public the documents that formed the basis of the Commissioner’s decision to grant the patent and which are relevant for assessing its validity.

Consequently the Commissioner will only direct that a document is not OPI where the interests in maintaining confidentiality in the information contained in the document clearly outweighs the general public interest requiring disclosure. 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.

When weighing up the varying interests it is appropriate to consider whether the interests of a third party directly impacted by a direction, e.g. an opponent, can be addressed by ordering inspection – see 7.13.2 Inspection of non-OPI documents.

An example of when a direction will be appropriate is where information is provided to the Commissioner to justify an extension of time that includes details of serious medical conditions. In such circumstances, general availability to members of the public, with no direct interest in the matter, is not justified.

Another situation in which the Commissioner may direct that information be not-OPI is where evidence filed in opposition proceedings includes information that is highly commercially sensitive and the public interest in general disclosure is low. This will be the case where a filed document includes sensitive information that is incidental to the purpose for which the document was filed. However where, for example, the sensitive information goes directly to a question of validity it is more likely that the public interest will favour the document being OPI.

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.

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.

Redacted documents

Under reg 4.3(2)(b) the Commissioner may only direct that a document is not OPI not a part of a document. However, 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 would then be associated with the application and become OPI.

Procedure

The legislation does not require the Commissioner to vet all filed documents for sensitive information. Rather, if the person filing the document requests that the Commissioner consider the matter or the Commissioner becomes aware of personally sensitive information in the ordinary course of her or his duties, the Commissioner will consider whether reg 4.3(2)(b) should be invoked.

If a document is filed with a request that it be declared not-OPI under reg 4.3(2)(b), or a document is identified containing sensitive personal information of the type indicated above, the document should be referred to the Supervising Examiner Patent Oppositions.

If the document has been entered into PAMS it should be marked as deleted pending consideration of its status.

If a decision is made that the document be not-OPI the document will be removed from PAMS and a copy saved in BRIK, although some material may also be held as physical media in the Patent Oppositions secure store where appropriate. The applicant and other interested parties will be informed and copy of the decision will be included in the file (and will become OPI).

Appeal

A decision made under reg 4.3(2)(b) to treat or not to treat a document as OPI is reviewable by the AAT under subparagraph 22.26(2)(a)(iia).