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- 1. International
- 1.1 International Searching
- 1.1.1 Procedural Outline - PCT International Search
- 1.1.2 Introduction
- 1.1.2.1 Introduction Background
- 1.1.2.2 Introduction International Examination
- 1.1.2.3 General Procedures
- 1.1.2.4 Extent of Search
- 1.1.2.5 Minimum Documentation
- 1.1.2.6 Examination Section Procedures
- 1.1.2.7 Searching Examiner
- 1.1.2.8 Other Considerations
- 1.1.2.9 Copending Applications
- 1.1.3 Search Allocation and Preliminary Classification
- 1.1.4 Unity of Invention
- 1.1.4.1 Unity of Invention Background
- 1.1.4.2 Determining Lack of Unity
- 1.1.4.3 Combinations of Different Categories of Claims
- 1.1.4.4 Markush Practice
- 1.1.4.5 Intermediate and Final Products in Chemical Applications
- 1.1.4.6 Biotechnological Inventions
- 1.1.4.7 Single General Inventive Concept
- 1.1.4.8 A Priori and A Posteriori Lack of Unity
- 1.1.4.9 Issuing the Invitation to Pay Additional Search Fees
- 1.1.4.10 Unsupported Unclear Long
- 1.1.4.11 Payment of Additional Search Fees Under Protest
- 1.1.4.12 Completing the Search Report
- 1.1.4.13 Time for Completing the Search Report
- 1.1.4.14 Reported Decisions
- 1.1.4.15 Other Decisions from the EPO
- 1.1.5 Abstract and Title
- 1.1.6 Subjects to be Excluded from the Search
- 1.1.7 Claim Interpretation, Broad Claims, PCT Article 5 and 6
- 1.1.7.1 Claim Interpretation According to the PCT Guidelines
- 1.1.7.1.1 PCT Guideline References and Flow Chart
- 1.1.7.1.2 Overview of the Hierarchy
- 1.1.7.1.3 Special Meaning, Ordinary Meaning, Everyday Meaning
- 1.1.7.1.4 Closed and Open Definitions and Implications for Interpretation
- 1.1.7.1.5 Implications of the Hierarchy on Searching
- 1.1.7.1.6 PCT GL Appendix Paragraphs 5.20[1] and 5.20[2]
- 1.1.7.1.7 Interpretation of Citations - Inherency
- 1.1.7.2 Broad Claims
- 1.1.7.3 PCT Articles 5 and 6
- 1.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims
- 1.1.7.5 Procedure for Informal Communication with the Applicant
- 1.1.8 Search Strategy
- 1.1.8.1 Introduction
- 1.1.8.2 The Three Person Team (3PT)
- 1.1.8.3 Area of Search
- 1.1.8.4 Search Considerations
- 1.1.9 Basis of the Search
- 1.1.10. Non-Patent Literature
- 1.1.11 Search Procedure
- 1.1.11.1 Overview - Novelty / Inventive Step
- 1.1.11.2 Inventive Step
- 1.1.11.3 Searching Product by Process Claims
- 1.1.11.4 Dates Searched
- 1.1.11.5 Conducting the Search
- 1.1.11.6 Useful Techniques ("piggy back/forward" searching)
- 1.1.11.7 Obtaining Full Copies
- 1.1.11.8 (reserved)
- 1.1.11.9 Considering and Culling the Documents
- 1.1.11.10 Ending the Search
- 1.1.11.11 Categorising the Citations
- 1.1.11.12 Grouping the Claims
- 1.1.12 Search Report and Notification Form Completion
- 1.1.12.1 Background Search Report and Notification Form Completion
- 1.1.12.2 Applicant Details
- 1.1.12.3 General Details
- 1.1.12.4 Fields Searched
- 1.1.12.5 Documents Considered to be Relevant
- 1.1.12.5.1 Selection of Documents Considered to be Relevant
- 1.1.12.5.2 Citation Category
- 1.1.12.5.3 Citation of Prior Art Documents
- 1.1.12.5.4 Citation of URLs
- 1.1.12.5.5 Citation Examples
- 1.1.12.5.6 Citing Patent Documents Retrieved from EPOQUE
- 1.1.12.5.7 Relevant Claim Numbers
- 1.1.12.6 Family Member Identification
- 1.1.12.7 Date of Actual Completion of the Search
- 1.1.12.8 Refund Due
- 1.1.12.9 Contents of Case File at Completion
- 1.1.13 Reissued, Amended or Corrected ISRs and ISOs
- 1.1.14 Priority Document
- 1.1.15 Foreign Patent Search Aids and Documentation
- 1.1.16 Assistance with Foreign Languages
- 1.1.17 Rule 91 Obvious Mistakes in Documents
- 1.1.18. Nucleotide and/or Amino Acid Sequence Listings
- 1.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings
- 1.1.18.2 Office Practice
- 1.1.18.3 Summary
- 1.1.19 Annexes
- Annex A - Blank ISR
- Annex B - Completed ISR
- Annex C - Completed ISR
- Annex D - Declaration of Non-Establishment of ISR
- Annex E - Completed Invitation to pay additional fees
- Annex F - Completed ISR with unity observations
- Annex H - Searching Broad Claims
- Annex I - Completed notification of change of abstract
- Annex J - Completed notification of decision concerning request for rectification
- Annex K - The role of the 3 Person Team in Searching
- Annex S - Refund of Search Fees
- Annex U - ISR Quality Checklist
- Annex V - Internet Searching
- Annex W - Obtaining full text from internet
- Annex Z - USPTO kind codes
- Annex AA - Markush Claims
- Annex BB - Article 5/6 Comparisons
- 1.2 International Type Searching
- 1.2.1 Procedural Outline International Type Search Report
- 1.2.2 Introduction - International Type Searching
- 1.2.3 Classification and Search Indication
- 1.2.4 Unity of Invention
- 1.2.5 Subjects to be Excluded from the Search
- 1.2.6 Obscurities, Inconsistencies or Contradictions
- 1.2.7 Abstract and Title
- 1.2.8 Search Report
- 1.2.9 Completing Search Report and Opinion Form
- 1.2.10 Annexes
- 1.3 International Examination
- 1.3.1 Procedural Outline Written Opinion
- 1.3.2 Introduction International Examination
- 1.3.3 The Demand and IPRPII
- 1.3.4 Top-up Search
- 1.3.5 First IPE action
- 1.3.5.1 First IPE Action
- 1.3.5.2 Supplementary International Search Report
- 1.3.5.3 PCT Third Party Observations
- 1.3.6 Response to Opinion
- 1.3.7 IPRPII and Notification
- 1.3.8 Completing ISO, IPEO and IPRPII Forms
- 1.3.8.1 Front Page and Notification Application Details
- 1.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs
- 1.3.8.3 Box II Priority
- 1.3.8.4 Box III Non-establishment of Opinion
- 1.3.8.5 Box IV Unity of Invention
- 1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability
- 1.3.8.7 Box VI Certain Documents Cited
- 1.3.8.8 Box VII Certain Defects
- 1.3.8.9 Box VIII Certain Observations
- 1.3.9 General Considerations
- 1.3.9.1 Article 19 or Article 34(2)(b) Amendments
- 1.3.9.2 Formalities
- 1.3.9.3 General Notes on Form Completion
- 1.3.9.4 Rule 91 Obvious Mistakes in Documents
- 1.3.9.5 Processing withdrawals of PCTs
- 1.3.10 Annexes
- Annex A Sub-Annexes
- Annex AA - Best Practice Example 1
- Annex AB - Best Practice Example 2
- Annex AC - Best Practice Example 3
- Annex AD - Best Practice Example 4
- Annex A - Written Opinion-ISA
- Annex B - Written Opinion-IPEO
- Annex C - Notification of Transmittal of IPERII
- Annex D - IPRPII
- Annex E - IPRPII Clear Novel and Inventive Box V Only
- Annex F - Invitation to Restrict/Pay Additional Fees - Unity
- Annex G - Extension of Time Limit
- Annex H - IPE Quality Checklist
- Annex I - Examples of Inventive Step Objections
- Annex J - Examples of Objections under PCT Articles 5 and 6
- Annex K - Example of PCT Third Party Observations
- Annex L - Blank Written Opinion - ISA
- Annex M - Blank Written Opinion - IPEO
- Annex N - Blank IPRPII
- Annex O - ISO/ISR with Omnibus Claims
- Annex P - PCT Timeline
- 1.4 Fiji Applications
- 1.4.1 Introduction
- 1.4.2 Completion Time and Priority
- 1.4.3 Initial Processing
- 1.4.4 Search Procedure
- 1.4.5 Search Report and Advisory Opinion
- 1.4.6 Further Advisory Opinion
- 1.4.7 Final Processing
- 1.4.8 Annexes
- 1.5 Thai Applications
- 1.5.1 Introduction Thai
- 1.5.2 Completion Time and Priority Thai
- 1.5.3 Initial Processing Thai
- 1.5.4 Search Procedure Thai
- 1.5.5 Search Report Thai
- 1.5.6 Final Processing Thai
- 1.5.7 Annex A - Thai Search Report
- 1.6 WIPO Searches
- 1.6.1 Introduction
- 1.6.2 Completion Time and Priority
- 1.6.3 Initial Processing
- 1.6.4 Search Procedure
- 1.6.5 Search Report
- 1.6.6 Final Processing
- 1.6.7 Annexes
- 1.7 Other Countries
- 1.8 (reserved)
- 1.9 PCT Articles, Regs and Guidelines et al
- 1.10 Miscellaneous
- 2. National
- 2.1 General Approach to Examination
- 2.1.1 Introduction
- 2.1.2 Searching and Use of IPRPI/IPRPIIs and Other Foreign Examination Reports
- 2.1.3 Flexible Approach for Complex Cases
- 2.1.4 Restriction of the Extent of the Report
- 2.1.4A Restriction of the Extent of the Report
- 2.1.5 Inconsistent or Piecemeal Examination
- 2.1.6 Examination and Report Requirements
- 2.1.7 Citations
- 2.1.7.1 Discussion of Citations
- 2.1.7.2 Identifying Citations
- 2.1.7.3 Assertion of Common General Knowledge and Mosaicing
- 2.1.7.4 Citing Many Citations
- 2.1.7.5 Non-Patent Literature
- 2.1.7.6 Providing Copies of Patent Documents
- 2.1.7.7 Unavailable or Untranslatable Citations
- 2.1.8 Furthers
- 2.1.9 Guidelines for Using IPRPI/IPRPIIs and Other Foreign Examination Reports (FERs) in Examination
- 2.1.9.1 Introduction
- 2.1.9.2 FER Retrieval
- 2.1.9.3 FER Validation
- 2.1.9.3.1 Claim Comparison
- 2.1.9.3.2 Not All Claims Previously Searched and/or Examined
- 2.1.9.3.2A Not All Claims Previously Searched and/or Examined
- 2.1.9.3.3 Validation of Novelty and Inventive Step Findings
- 2.1.9.3.4 Law and Practice Differences
- 2.1.9.3.4A Law and Practice Differences
- 2.1.9.3.5 Other Considerations Independent of FER Validity
- 2.1.9.4 FERs and Report Formulation
- 2.1.9.4.1 Objections Based on FER
- 2.1.9.4.2 Identifying Citations, Multiple Citations
- 2.1.9.4.3 New Citations at Further Report
- 2.1.9.5 FERs and Lack of Unity
- 2.1.9.6 FERs and Complex Cases
- Annex A - Open Patent Services (OPS) FER Process
- 2.2 Other Examination Considerations
- 2.2.1 Abbreviations Used in this Volume
- 2.2.2 "Private Applicant" Cases
- 2.2.3 Poor Translations
- 2.2.4 Communication of Report
- 2.2.4.1 Emailing Reports to Applicants or Attorneys, Sending Urgent Reports
- 2.2.4.2 Delayed or Non-Receipt of the Report by the Applicant or Attorney
- 2.2.4.3 Correction of Reports
- 2.2.5 Work Priorities and Case Allocation
- 2.2.6 Responsibility for Furthers, Voluntary Section 104 Amendments
- 2.2.7 Communication with Applicants and Attorneys Outside the Reporting Process and Recording of Case Notes
- 2.2.7.1 Introduction
- 2.2.7.2 Communication with Applicants or Attorneys by Phone
- 2.2.7.3 Communication with Applicants or Attorneys by Email
- 2.2.7.4 Dealing with Applicants or Attorneys in Person
- 2.2.7.5 Recording of Case Notes
- 2.2.8 Summary of IP Reform Changes
- 2.3 Definitions
- 2.3.1 Definitions in the Patents Act
- 2.3.2 Effect of the Acts Interpretation Act
- 2.3.3 Some Examples of Intended Ambits
- 2.3.4 Reckoning of Time
- 2.4 Novelty
- 2.4.1 Introduction
- 2.4.2 Test for Novelty
- 2.4.3 Applying the Test for Novelty
- 2.4.4 Relevant Prior Art
- 2.4.4.1 Prior Art Information
- 2.4.4.1A Prior Art Information
- 2.4.4.2 Meaning of Document
- 2.4.4.3 Publicly Available
- 2.4.4.4 Mosaics and Related Documents
- 2.4.4.5 Resiling from Acknowledged Prior Art
- 2.4.4.6 Exclusions
- 2.4.5 Construing the Citation
- 2.4.6 Level of Disclosure Required
- 2.4.6.1 Practical Utility
- 2.4.6.2 Non-Literal Disclosure
- 2.4.6.3 Clear and Unmistakable Directions
- 2.4.6.4 Mere Paper Anticipations
- 2.4.6.5 Enabling Disclosures
- 2.4.6.6 General Disclosures, Selections
- 2.4.7 All Features Disclosed in Citation
- 2.4.8 Not All Features of Claim Disclosed in Citation
- 2.4.8.1 Introduction
- 2.4.8.2 Features of a Claim prima facie Essential
- 2.4.8.3 Mere Presence in Claim Does Not Ensure Essential
- 2.4.8.4 Materially Affects the Way the Invention Works
- 2.4.8.5 Collocations Kits
- 2.4.8.6 Objects of the Invention, Statements of Prior Art
- 2.4.8.7 Words and Phrases
- 2.4.8.8 Conflicting Statements
- 2.4.8.9 Consideration of Independent and Dependent Claims
- 2.4.9 Doctrine of Mechanical Equivalents
- 2.4.10 All Essential Features Disclosed in Citation
- 2.4.11 "Whole of Contents"
- 2.4.11.1 Introduction
- 2.4.11.2 Basis of the Whole of Contents Objection
- 2.4.11.2A Basis of the "Whole of Contents" Objection
- 2.4.11.3 Priority Date Considerations
- 2.4.11.4 Publication Considerations
- 2.4.11.4A Publication Considerations
- 2.4.11.5 Citation Must be a Single Document
- 2.4.11.6 Citation an International Application under the PCT
- 2.4.11.7 Citation Not OPI
- 2.4.11.8 Citation a Secret Case
- 2.4.11.9 Citation cannot be a Provisional Specification
- 2.4.11.10 Level of Disclosure
- 2.4.12 Novelty - Some Specific Examples
- 2.4.12.1 Chemical Compounds
- 2.4.12.1.1 Construction - Implicit Degree of Purity
- 2.4.12.1.2 Essential Features of Compound Inventions
- 2.4.12.1.3 Enabling Disclosure
- 2.4.12.1.4 Generic Disclosures as Citations
- 2.4.12.1.5 Optical Isomers
- 2.4.12.1.6 Constitutional and Geometric Isomers
- 2.4.12.1.7 Tautomers
- 2.4.12.1.8 Derivatives
- 2.4.12.1.9 Purposive Construction of Compound Claims
- 2.4.12.1.10 Reach-Through Claims
- 2.4.12.2 Range of Variables
- 2.5 Inventive Step
- 2.5.1 Overview
- 2.5.1.1 Introduction
- 2.5.1.2 The Statutory Basis for Inventive Step
- 2.5.1.2A The Statutory Basis for Inventive Step
- 2.5.1.3 Precedent, and the Meaning of Obvious
- 2.5.1.4 Comparison between Novelty and Inventive Step
- 2.5.1.4.1 Prior Art Base
- 2.5.1.4.1A Prior Art Base
- 2.5.1.4.2 Operation of Section 7
- 2.5.1.4.2A Operation of Section 7
- 2.5.1.5 Tests for Inventive Step
- 2.5.1.6 Assessing Inventive Step in Examination
- 2.5.1.6A Assessing Inventive Step in Examination
- 2.5.1.7 Ex Post Facto Analysis
- 2.5.2 Identifying the Relevant Facts
- 2.5.2.1 Common General Knowledge
- 2.5.2.1.1 Introduction
- 2.5.2.1.1A Introduction
- 2.5.2.1.2 What is Common General Knowledge?
- 2.5.2.1.3 Evidence of Common General Knowledge
- 2.5.2.1.4 Acknowledged Prior Art
- 2.5.2.1.5 Common General Knowledge in Australia
- 2.5.2.1.5A Common General Knowledge not Limited to Being in Australia
- 2.5.2.1.6 Patent Specifications as Indicators of Common General Knowledge
- 2.5.2.1.7 Considerations at Further Reports
- 2.5.2.2 Non-Essential Features of the Invention Claimed
- 2.5.2.3 Determining the Problem
- 2.5.2.3.1 Introduction
- 2.5.2.3.1A Introduction
- 2.5.2.3.2 Problem Determined by Reference to Common General Knowledge and Prior Art Information
- 2.5.2.3.3 Claim Does Not Solve the Identified Problem
- 2.5.2.3.4 Amendment of the Problem
- 2.5.2.4 Identifying the Person Skilled in the Art (PSA)
- 2.5.2.4A Identifying the Person Skilled in the Art
- 2.5.2.5 Could the Person Skilled in the Art be Reasonably Expected to have Ascertained, Understood, Regard as Relevant and, Where Applicable, Combined the Prior Art Information?
- 2.5.2.5.1 Ascertained
- 2.5.2.5.2 Understood
- 2.5.2.5.3 Regarded as Relevant
- 2.5.2.5.3.1 Document Discusses the Same, or a Similar, Problem
- 2.5.2.5.3.2 Document Discusses a Different Problem
- 2.5.2.5.3.3 Age of the Document
- 2.5.2.5.3.4 Would the Person Skilled in the Art Have used the Document to Solve the Problem
- 2.5.2.5.4 Does the Document Constitute a Single Source of Information
- 2.5.2.5.5 Could the Person Skilled in the Art Consider it Obvious
- 2.5.2.5.5A Could the Person Skilled in the Art be Reasonably Expected to Have Combined the Prior Art Information to Solve the Problem?
- 2.5.2.5.6 Inventive Step Objections Involving a Combination of Documents
- 2.5.2.5A Prior Art Information
- 2.5.2.6 Evidentiary Requirements
- 2.5.3 Tests for Inventive Step
- 2.5.3.1 Introduction
- 2.5.3.2 Technical Equivalents
- 2.5.3.3 Workshop Improvements
- 2.5.3.3.1 Single Solution to the Problem
- 2.5.3.3.2 Bonus Effect
- 2.5.3.3.3 Several Solutions to the Problem
- 2.5.3.3.4 Selections
- 2.5.3.3.5 Obvious to Try
- 2.5.3.4 Special Inducements, Obvious Selections
- 2.5.3.5 Obvious Combinations of Features of Common General Knowledge
- 2.5.3.6 Invention in Identifying the Real Nature of the Problem
- 2.5.3.7 Invention in the Idea
- 2.5.3.8 Invention in the Purpose
- 2.5.3.9 Sub-Tests of Inventive Step
- 2.5.3.9.1 Prior Art, or Common General Knowledge, Teaches Away From the Solution
- 2.5.3.9.2 Practical Difficulties Overcome
- 2.5.3.9.3 Enabling Disclosures SubTests
- 2.5.3.10 Indicators of Inventive Step
- 2.5.4 Inventive Step - Some Specific Examples
- 2.6 Applicants and Nominated Persons, Patent Requests, Entitlement
- 2.6.1 Applicants and Nominated Persons
- 2.6.2 Patent Requests
- 2.6.2.1 The Request
- 2.6.2.2 Amendment of a Request
- 2.6.2.3 Name of the Applicant and Inventor
- 2.6.2.4 Address for Correspondence
- 2.6.2.5 Address for Service
- 2.6.2.6 Details of Related Applications
- 2.6.3 Entitlement
- 2.6.3.1 Notices of Entitlement
- 2.6.3.2 Identification of the Application
- 2.6.3.3 Who Can Make the Notice
- 2.6.3.4 Statements of Devolution
- 2.6.3.5 Section 15(1)(b) - Service Agreements
- 2.6.4 Changing the Applicant or Nominated Person
- 2.6.4.1 General Considerations
- 2.6.4.2 Section 113 Amendments (Assignment, Agreement or Operation of Law)
- 2.6.4.3 Section 104 Amendments
- Annex A - Examples of Legal Persons
- Annex B - Examples of Organisations of Uncertain Status as Legal Persons
- 2.7 Micro-Organisms and Other Life Forms
- 2.7.1 General Considerations and Definitions
- 2.7.2 Full Written Description of a Life Form
- 2.7.2.1 General Requirements of the Description
- 2.7.2.1A General Requirements of the Description
- 2.7.2.2 Some Specific Requirements for the Written Description of Plant Varieties
- 2.7.2.3 Best Method of Performance of an Invention Involving a Life Form
- 2.7.2.4 The Issue of Repeatability
- 2.7.3 The Budapest Treaty
- 2.7.3.1 Introduction
- 2.7.3.1A Introduction
- 2.7.3.2 Full Description of a Micro-Organism by Satisfying the Deposit Requirements
- 2.7.3.2A Enabling Disclosure of a Micro-Organism by Satisfying the Deposit Requirements
- 2.7.3.3 Inventions Involving the Use
- 2.7.3.4 Deposit Requirements in Modified Examination
- 2.7.3.5 Deposit Requirements Affecting the Priority Date of a Divisional Application
- 2.7.4 The Deposit Requirements
- 2.7.4.1 Types of Deposits Under the Budapest Treaty
- 2.7.4.2 Deposit Requirements Under Section 6
- 2.7.4.3 Deposit Receipt and Notice of Entitlement to Rely on Deposit
- 2.7.5 Amendments to Insert Section 6(c) Information and Extensions of Time Therefor
- 2.7.5.1 Sections 104 and 223 - Insertion of Section 6(c) Information
- 2.7.5.1A Sections 104 and 223 - Insertion of Section 6(c) Information
- 2.7.5.2 Article 34 Amendments Concerning Section 6(c) Information
- 2.7.5.3 Amendment Procedure When a Request for Certification for Release is Pending
- 2.7.5.4 Amendment Procedure When Deposit Requirements Cease to be Satisfied
- 2.7.6 Release of a Sample of Deposit
- 2.7.6.1 Request for Release
- 2.7.6.2 Consideration of Request for Release
- 2.7.6.3 Grant of Certification Authorising Release
- 2.7.6.4 Restrictive Access Provision
- 2.7.7 Deposit Requirements Cease to be Satisfied
- Annexes
- 2.8 Abstracts
- 2.9 Patentability Issues
- 2.9.1 Overview
- 2.9.2 Patentable Subject Matter (Manner of Manufacture)
- 2.9.2.1 Legal Principles
- 2.9.2.2 Reserved
- 2.9.2.3 Alleged Invention
- 2.9.2.4 Fine Arts
- 2.9.2.5 Discoveries, Ideas, Scientific Theories, Schemes and Plans
- 2.9.2.6 Nucleic Acids and Genetic Information
- 2.9.2.7 Computer Implemented Inventions - Schemes and Business Methods
- 2.9.2.8 Printed Matter
- 2.9.2.9 Games and Gaming Machines
- 2.9.2.10 Mathematical Algorithms
- 2.9.2.11 Methods of Testing, Observation and Measurement
- 2.9.2.12 Mere Working Directions
- 2.9.2.13 Treatment of Human Beings
- 2.9.2.14 Micro-Organisms and Other Life Forms
- 2.9.2.15 Agriculture and Horticulture
- 2.9.2.16 Combinations, Collocations, Kits, Packages and Mere Admixtures
- 2.9.2.16.1 Collocations
- 2.9.2.16.2 Kits and Packages
- 2.9.2.16.3 Admixtures
- 2.9.2.16.4 Tips on Claim Construction
- 2.9.2.17 New Uses
- 2.9.2.17.1 New Use of a Known Substance
- 2.9.2.17.2 New Use of an Old Contrivance
- 2.9.2.17.3 Analogous Use
- 2.9.2.18 Ethics and Social Policy
- 2.9.3 Other Issues
- 2.9.3.1 Contrary to Law
- 2.9.3.2 Food or Medicines, Being Mere Admixtures
- 2.9.3.3 General Inconvenience
- 2.9.3.4 Useful (Utility)
- 2.9.3.4A Useful (Utility)
- 2.9.3.4.1A Assessing the Claims for Lack of Usefulness
- 2.9.3.4.1.1A Does the Invention Achieve the Promised Benefit?
- 2.9.3.4.1.2A Specific, Substantial and Credible Use
- 2.9.3.4.2A Consideration of Specific Claim Types
- 2.9.3.4.3A Therapeutic or Pharmacological Use
- 2.9.3.4.4A Contravention of Laws of Nature
- 2.9.3.5 Human Beings and Biological Processes for Their Generation
- 2.9 Annex A - History of Manner of Manufacture
- 2.10 Divisional Applications (Sections 79B and 79C)
- 2.10.1 Application
- 2.10.1A Application
- 2.10.2 Priority Entitlement
- 2.10.2A Priority Entitlement
- 2.10.3 Time Limits for Filing Applications
- 2.10.3A Time Limits for Filing Applications
- 2.10.4 Status of Parent
- 2.10.5 Subject Matter
- 2.10.5A Subject Matter
- 2.10.6 Acceptance
- 2.10.7 Continuation Fees
- 2.10.8 Dividing From a Provisional Application
- 2.10.9 Considering Relative Cases During Examination
- 2.10.10 Amendment of Patent Request - Conversion of Application to a Divisional
- 2.10.10A Amendment of Patent Request - Conversion of Application to a Divisional
- Annex A - Procedural Outline to Divisional Application Examination
- 2.11 Section 40 - Specifications
- 2.11.1 Overview
- 2.11.1A Overview
- 2.11.2 Construction of Specifications
- 2.11.2.1 The Addressee
- 2.11.2.2 Rules of Construction
- 2.11.2.2.1 Construction of Patent Specifications a Question of Law
- 2.11.2.2.2 Words are Given their Plain Meaning
- 2.11.2.2.3 Read the Specification as a Whole
- 2.11.2.2.3A Read the Specification as a Whole
- 2.11.2.2.4 Purposive Construction
- 2.11.2.2.5 Dictionary Principle
- 2.11.2.2.6 Reject the Absurd
- 2.11.2.2.7 The Description Construed as a Technical Document
- 2.11.2.2.8 Errors, Mistakes, Omissions
- 2.11.2.3 Construction of Claims
- 2.11.2.3.1 The Claims are Construed as a Legal Document
- 2.11.2.3.2 A Presumption is Made Against Redundancy
- 2.11.2.3.3 "For Use", "When Used", etc
- 2.11.2.3.3A "For Use", "When Used", etc
- 2.11.2.3.4 "Comprises", "Includes", "Consists of" and "Contains"
- 2.11.2.3.5 Reference Numerals in Claims
- 2.11.2.3.6 Appendancies
- 2.11.2.3.7 Relative Terms
- 2.11.2.3.8 "Substantially" and "About"
- 2.11.2.3.9 Omnibus Claims
- 2.11.2.3.9A Omnibus Claims
- 2.11.2.3.10 Swiss Claims
- 2.11.2.3.11 Product by Process Claims
- 2.11.2.3.12 Parametric Claims
- 2.11.2.4 What is the Invention?
- 2.11.2.4.1 General Considerations
- 2.11.2.4.2 Approach in Lockwood v Doric
- 2.11.2.4.3 Consistory Clause
- 2.11.2.4.3A Consistory Clause
- 2.11.2.4.4 Requirement for Critical Analysis
- 2.11.2.4.5 "Essential Features" of the Invention
- 2.11.2.4A What is the Invention?
- 2.11.3 Full Description, Best Method
- 2.11.3.1 Date for Determining Full Description
- 2.11.3.2 Can the Nature of the Invention be Ascertained?
- 2.11.3.3 Compliance with Subsection 40(2) is a Question of Fact
- 2.11.3.4 Enabling Disclosures
- 2.11.3.5 Effort Required to Perform the Invention
- 2.11.3.6 Different Aspects Claimed in Different Claims
- 2.11.3.7 Inclusion of References
- 2.11.3.8 Trade Marks in Specifications
- 2.11.3.9 Colour Drawings and Photographs
- 2.11.3.10 Claims as Basis of Disclosure
- 2.11.3.11 Contravention of Laws of Nature - e.g. Perpetual Motion Machines
- 2.11.3.12 Relative Terms
- 2.11.3.13 Starting Materials
- 2.11.3.14 Cyclic Inventions
- 2.11.3.15 Biological Inventions and the Budapest Treaty
- 2.11.3.16 Distinction Between Lack of Full Description, Inutility and False Suggestion
- 2.11.3.17 Best Method of Performing the Invention
- 2.11.3.18 At Least One Method Must be Disclosed
- 2.11.3.19 Only One Preferred Embodiment is Required
- 2.11.3A Clear Enough and Complete Enough Disclosure
- 2.11.3.1A Date for Determining Clear Enough and Complete Enough Disclosure
- 2.11.3.3A Compliance with Subsection 40(2) is a Question of Fact
- 2.11.3.4A Principles for Examination
- 2.11.3.4.1A Clarity of Disclosure
- 2.11.3.4.2A Section 40 Enabling Disclosures
- 2.11.3.4.3A Undue Burden
- 2.11.3.7A Inclusion of References
- 2.11.3.8A Trade Marks in Specifications
- 2.11.3.9A Colour Drawings, Graphics and Photographs
- 2.11.3.10A Claims as Basis of Disclosure
- 2.11.3.11A Contravention of Laws of Nature - e.g. Perpetual Motion Machines
- 2.11.3.12A Relative Terms
- 2.11.3.14A Cyclic Inventions
- 2.11.3.15A Biological Inventions and the Budapest Treaty
- 2.11.3.17A Best Method of Performing the Invention
- 2.11.3.18A At Least One Method Must be Disclosed
- 2.11.3.19A Only One Preferred Embodiment is Required
- 2.11.4 Claims Define the Invention
- 2.11.4A Claims Define the Invention
- 2.11.5 Claims are Clear
- 2.11.5.1 Length of Claim
- 2.11.5.2 One Sentence
- 2.11.5.3 Redundant Claims
- 2.11.5.4 Different Combinations of Integers
- 2.11.5.5 Dictionary Definitions
- 2.11.5.6 Cross-References
- 2.11.5.6A Cross-References
- 2.11.5.7 Trade marks in claims
- 2.11.5.7A Trade Marks in Claims
- 2.11.5.8 Disclaimers
- 2.11.5.9 Imprecise Terms - e.g. "About"
- 2.11.5.10 Appendancy Issues
- 2.11.6 Claims are Succinct
- 2.11.7 Claims are Fairly Based
- 2.11.7.1 General Principles
- 2.11.7.2 Sub-Tests for Fair Basis
- 2.11.7.3 Relationship Between the Invention Described and the Invention Claimed
- 2.11.7.4 Only Disclosure is in a Claim
- 2.11.7.5 Alternatives in a Claim
- 2.11.7.6 Claiming by Result
- 2.11.7.7 Reach-Through Claims
- 2.11.7.8 Claims to Alloys
- 2.11.7A Support for the Claims
- 2.11.7.1A Principles for Examination
- 2.11.7.2A Subsection 40(2)(a) 'Clear and Complete Disclosure' v Subsection 40(3) 'Support'
- 2.11.7.3A Inconsistency Between the Invention Disclosed and the Invention Claimed
- 2.11.7.4A Support in View of Proposed Amendments
- 2.11.7.5A Alternatives in a Claim
- 2.11.7.6A Claiming by Result
- 2.11.7.7A Reach-Through Claims
- 2.11.7.8A Claims to Alloys
- 2.11.7.9A Broad or Speculative Claims
- 2.11.7.10A Support Required for Pharmaceutical Inventions and Methods of Treatment
- 2.11.8 Claims Relate to One Invention Only - Lack of Unity
- 2.11.9 Title of the Specification
- 2.11.10 Provisional Specifications
- 2.11.10A Provisional Specifications
- 2.11.11 Complete Applications Associated with Provisional Applications
- 2.11.11A Complete Applications Associated with Provisional Applications
- 2.11.12 Complete Application Treated as a Provisional
- 2.11A Annex A - Examples: Subsections 40(2)(a) and 40(3)
- 2.11A Annex B - Summary of the Clear Enough and Complete Enough Disclosure, Support and Useful (Utility) Provisions
- 2.12 Priority Dates and Filing Dates
- 2.12.1 Priority Dates
- 2.12.1.1 Priority Date of Claims
- 2.12.1.1A Priority Date of Claims
- 2.12.1.2 Priority Date Issues Specific to Associated Applications
- 2.12.1.2A Priority Date Issues Specific to Associated Applications
- 2.12.1.3 Priority Date Issues Specific to Convention Applications
- 2.12.1.3A Priority Date Issues Specific to Convention Applications
- 2.12.1.4 Priority Date Issues Relating to Amended Claims
- 2.12.1.4A Priority Date Issues Relating to Amended Claims
- 2.12.2 Filing Dates
- 2.13 Examination
- 2.13.1 Initial Considerations
- 2.13.2 Applications in a State of Lapse, or Lapsed
- 2.13.2.1 Forms of Lapsing
- 2.13.2.2 Lapsing Prior to Issuing First Report
- 2.13.2.3 Lapsing at Further Report
- 2.13.3 Pending Section 223 Actions
- 2.13.4 Request for Examination
- 2.13.4.1 Request Procedures
- 2.13.4.2 Order of Examination
- 2.13.4.3 Expedited Examination
- 2.13.4.4 Expedited Examination Under the Global Patent Prosecution Highway
- 2.13.4.5 Expedited Examination Under the IP Australia-European Patent Office Patent Prosecution Highway
- 2.13.5 Stringency of Tests During Examination
- 2.13.5.1 Introduction
- 2.13.5.1A Introduction
- 2.13.5.2 Balance of Probabilities
- 2.13.5.2A Balance of Probabilities
- 2.13.5.3 Benefit of Doubt
- 2.13.6 Matters of Form
- 2.13.7 Amendments
- 2.13.7.1 Amendments in Anticipation
- 2.13.7.2 Notice of Incoming Amendments
- 2.13.7.3 Amendments in Partial Response to a Report
- 2.13.7.4 Suggesting Amendments
- 2.13.7.5 Late Filing of Amendments and Responses
- 2.13.8 Review of Classification
- 2.13.9 Searching
- 2.13.10 (reserved)
- 2.13.11 Notices Under Section 27
- 2.13.12 Other Prescribed Matters
- 2.13.13 Examining Cases Subject to a Prohibition Order
- 2.13.13.1 Statutory Basis
- 2.13.13.2 Initial Handling
- 2.13.13.3 Allocation and Handling of Cases
- 2.13.13.4 Searching Prohibited Cases
- 2.13.13.5 Recording Search/Classification Details
- 2.13.14 Copying of Material and Copyright Implications
- 2.13.15 Preliminary Search and Opinion (PSO)
- 2.13.15.1 Introduction
- 2.13.15.2 Applicant Requested PSO
- 2.13.15.3 Amendments
- 2.13.15.4 Search Procedure
- 2.13.15.5 Opinion
- 2.13.15.6 PSO Form Completion
- 2.13.15.7 Response to PSO
- Annexes
- 2.14 Modified Examination
- 2.15 Acceptance of Standard Patent Applications
- 2.15.1 Introduction
- 2.15.2 Misleading Unfair or Derogatory References
- 2.15.3 Processes Operated Outside the Jurisdiction of Australian Law
- 2.15.4 Clear Reports
- 2.15.5 Revocation of Acceptance
- 2.15.6 Time for Acceptance
- 2.15.7 Exending the Time for Acceptance
- 2.15.7.1 Objections Based on "Whole of Contents"
- 2.15.7.2 Objections Based on a Section 27 Notice
- 2.15.7.3 Request for Corrected Translation or Certificate of Verification
- 2.15.7.4 Request for Basic Specification
- 2.15.7.5 Entitlement Disputes During Examination
- 2.15.7.6 Action by a Court or Tribunal
- 2.15.8 Postponement of Acceptance
- 2.15.9 Acceptance and QRS Issues
- 2.16 Petty Patents
- 2.17 Publications
- 2.17.1 Significance of Publication
- 2.17.2 Date of Publication
- 2.17.3 OPI Notified by Error
- 2.17.4 Obtaining OPI Date
- 2.17.5 Published Documents
- 2.17.6 Publication Date of PCT and Foreign Specifications for Citation Purposes
- 2.18 Multiple Applications (Sections 64(2) and 101B)
- 2.18.1 Introduction
- 2.18.2 Practice
- 2.18.3 Examination Reports
- 2.18.4 Requirement that Inventors be the Same
- 2.18.5 Inventions Claimed in a Claim
- 2.18.6 Same Invention
- 2.18.7 Priority Dates
- 2.18.8 Additionals/Divisionals
- 2.18.9 Omnibus Claims
- Annex A - Bar-to-Grant Letter
- 2.19 Patents of Addition (Chapter 7)
- 2.19.1 Applications for Patents of Addition
- 2.19.1.1 Introduction
- 2.19.1.2 Neither Can be an Innovation Patent
- 2.19.1.3 Conditions of Filing
- 2.19.1.4 Patent Must be in Force
- 2.19.1.5 Fees
- 2.19.1.6 Authorisation From Parent Application
- 2.19.1.7 Main Invention Ownership Change
- 2.19.1.8 One Parent Only
- 2.19.1.9 Plural Additional Applications
- 2.19.1.10 Additional to an Additional
- 2.19.1.11 May be Both an Additional and Divisional
- 2.19.2 Examination Procedure
- 2.19.3 Improvement and Modification
- 2.19.4 Amendments Add
- 2.19.5 Timing Provisions
- 2.19.6 Differentiation From the Parent
- 2.19.7 Considering Parent File During Examination
- Annex A - Procedural Outline to Patents of Addition Examination
- 2.20 National Phase Applications
- 2.20.1 Introduction
- 2.20.1.1 Definitions of Terms
- 2.20.1.2 Key Features of the Legislation
- 2.20.1.2A Key Features of the Legislation
- 2.20.1.3 National Phase Preliminaries
- 2.20.1.3A National Phase Preliminaries
- 2.20.1.4 Formality Requirements
- 2.20.1.4A Formalities Check
- 2.20.2 Classification
- 2.20.3 Patent Request and Entitlement
- 2.20.4 Complete Specification in a Foreign Language
- 2.20.4.1 General Considerations
- 2.20.4.2 Translation Supplied by the Applicant
- 2.20.4.3 Translation Supplied by the International Bureau
- 2.20.5 Priority Considerations
- 2.20.5.1 Priority Sources
- 2.20.5.1A Priority Sources
- 2.20.5.2 Obtaining and Considering Priority Documents
- 2.20.6 National Examination Where the ISR is Available
- 2.20.7 National Examination Where the ISR is Missing
- 2.20.8 Use of IPRP
- 2.20.9 According International Filing Dates and Article 25 Applications
- 2.20.10 Amendments and Corrections Prior to Examination
- 2.20.10.1 Determining Whether Amendments Made Under Articles and Rules of the PCT are Considered During Examination
- 2.20.10.1.1 General Provisions
- 2.20.10.1.1A General Provisions
- 2.20.10.1.2 Determining Whether Article 19 and Article 34 Amendments are Considered During Examination
- 2.20.10.1.2A Determining Whether Article 19 and Article 34 Amendments are Considered During Examination
- 2.20.10.1.3 The IASR
- 2.20.10.1.4 The IASF
- 2.20.10.2 Formality Considerations
- 2.20.10.3 Article 19 Amendments
- 2.20.10.4 Article 34 Amendments
- 2.20.10.5 Translation of Amendments
- 2.20.10.6 Amendments Resulting in a Claim to New Matter
- 2.20.10.7 Rule 91 Amendments
- 2.20.10.8 Rule 92bis Amendments
- 2.20.10.9 Corrected Versions of Pamphlet and IPRPII
- 2.20.11 Amendments During Examination
- 2.20.11A Amendments During Examination
- 2.20.12 Chapter 15 Applications (Sections 147 to 153)
- Annexes
- Annex A - Examination of National Phase Applications: Indicators of Special or Different Considerations
- Annex B - Applicant and Inventor Details as Shown on PCT Pamphlet Front Page
- Annex C - Declaration Under Rule 4.17
- Annex D - Verification of Translation
- Annex E - PCT Pamphlet Front Page
- Annex F - Amended Claims Format
- 2.21 Convention Applications
- 2.21.1 Introduction
- 2.21.2 Convention Countries
- 2.21.2.1 Convention Country Listing
- 2.21.2.1A Convention Country Listing
- 2.21.2.2 Basic Applications Filed Before Intergovernmental Organisations
- 2.21.2.3 Convention Country Status Change
- 2.21.2.3A Convention Country Status Change
- 2.21.3 Making Convention Applications
- 2.21.3.1 General Requirements
- 2.21.3.2 Who May Apply
- 2.21.3.3 Basic Applications
- 2.21.3.4 Timing Provisions Convention
- 2.21.3.5 Basic Application Outside 12 Month Convention Period
- 2.21.3.5A Basic Application Outside 12 Month Convention Period
- 2.21.3.6 Basic Applications Having a Parent Application
- 2.21.3.7 Patent Requests and Entitlement
- 2.21.3.8 Basic Specifications
- 2.21.3.9 Converting Convention Applications to Non-Convention, and Vice Versa
- 2.21.3.10 Translation Requirements
- 2.21.3.11 Date of Basic Application
- 2.21.3.12 Convention Priority Dates
- 2.21.3.12A Convention Priority Dates
- 2.22 Re-Examination
- 2.22.1 Introduction
- 2.22.2 Transitional Provisions
- 2.22.3 When Re-Examination Applies
- 2.22.3.1 Between Acceptance and Grant (Applications for Standard Patents)
- 2.22.3.2 Post-Grant (Standard and Innovation Patents)
- 2.22.3.3 Re-examination of Standard Applications and Innovation Patents
- 2.22.4 Re-Examination Consideration
- 2.22.4.1 Scope of the Consideration
- 2.22.4.2 Re-Examination Request
- 2.22.4.3 Material Considered During Re-Examination
- 2.22.4.4 Re-Examination in Light of the Traditional Knowledge Digital Library (TKDL)
- 2.22.5 Re-Examination Report
- 2.22.5.1 Initial Report
- 2.22.5.2 Statement under Section 99 or Section 101H
- 2.22.5.3 Copy of the Statement under Section 99 or Section 101H
- 2.22.5.4 Subsequent Adverse Reports
- 2.22.5.5 Proposed Amendments are Allowable
- 2.22.5.6 Proposed Amendments are not Allowable
- 2.22.5.7 Supervision of Reports
- 2.22.6 Completion of Re-Examination Process
- 2.22.6.1 Completion of Re-Examination in an Opposition Proceeding
- 2.22.6.2 Conclusion of Re-Examination Otherwise
- 2.22.7 Copy of Report on Re-Examination
- 2.22.8 Refusal to Grant a Patent Following Re-examination
- 2.22.9 Revocation of Patent Following Re-examination
- 2.22.9.1 Decision by the Commissioner
- 2.22.9.2 Where Proceedings are Pending
- 2.22.9.3 Appeal by the Patentee
- 2.22.9.4 Appeal by a Third Party
- Annex A - Re-examination Processing
- Annex B - Intention to Re-Examine Letter
- Annex C - Re-Examination Checklist
- 2.23 Amendments
- 2.23.1 Introduction
- 2.23.2 General Provisions - Section 104 Amendments
- 2.23.2.1 Who May Request Amendment
- 2.23.2.2 When Amendment May Be Requested
- 2.23.2.3 What Documents Can Be Amended
- 2.23.2.4 Withdrawal of Amendment Request
- 2.23.2.5 Multiple Requests for Amendment
- 2.23.2.6 National Phase Applications
- 2.23.2.7 Priority in Reporting on Voluntary Requests to Amend
- 2.23.2.8 Unfinalised Proposed Amendments Prior to Examination
- 2.23.3 Formalities
- 2.23.3.1 Form of Request to Amend
- 2.23.3.2 The Document to be Amended
- 2.23.3.3 When Amendments are OPI
- 2.23.3.4 Amendments Arising Out of Decisions or Directions Under Appeal
- 2.23.3.5 Relevant Proceedings Pending
- 2.23.3.6 Consent of Exclusive Licensee or Mortgagee Required
- 2.23.3.7 Requirements in Relation to Providing Reasons for Proposed Amendments
- 2.23.3.8 Form Amendments Should Take
- 2.23.3.9 Amending a Complete Specification Under Section 104 to Comply with a Regulation 3.2A Direction
- 2.23.3.10 Incorporating Amendments into the Specification
- 2.23.3.11 Amendments to Amino Acid and/or Nucleotide Sequences in Electronic Form
- 2.23.4 Fees
- 2.23.4.1 Fees Required for Amendment Requests
- 2.23.4.2 Request to Amend Where Patent/Application is not in Force
- 2.23.5 Granting Leave to Amend/Allowing the Amendments
- 2.23.5.1 Granting Leave to Amend
- 2.23.5.2 Publishing a Notice of the Granting of Leave to Amend
- 2.23.5.3 Allowing Amendments After Granting Leave
- 2.23.5.4 Allowing Amendments Upon Acceptance of a Patent Request and Complete
- 2.23.5.5 Allowing Amendments Immediately Prior to OPI
- 2.23.5.6 Revocation of Leave to Amend
- 2.23.6 Amendments to Complete Specifications
- 2.23.7 Allowability of Amendments to Complete Specifications
- 2.23.7A Allowability of Amendments to Complete Specifications
- 2.23.8 Allowability under Section 102(1)
- 2.23.8A Allowability Under Section 102(1)
- 2.23.9 Allowability Under Section 102(2) etc
- 2.23.9.1 General Comments
- 2.23.9.1A General Comments
- 2.23.9.2 Meaning of fall within the scope of the claims
- 2.23.9.3 Allowability Under Section 102(2)(a)
- 2.23.9.4 Broadening the Scope of the Claims
- 2.23.9.5 Allowability and Omnibus Claims
- 2.23.9.5A Allowability and Omnibus Claims
- 2.23.9.6 Allowability Under Section 102(2)(b)
- 2.23.10 "Clerical Error" and "Obvious Mistake"
- 2.23.10.1 General Comments
- 2.23.10.2 Clerical Error
- 2.23.10.3 Obvious Mistake
- 2.23.10.4 Evidence Required to Prove a Clerical Error or Obvious Mistake
- 2.23.11 Amendments After the Grant of a Patent
- 2.23.12 Other Allowability Issues Concerning Amendments to Complete Specifications
- 2.23.12.1 Amendments Relating to Micro-Organisms
- 2.23.12.2 Amendments Otherwise not Allowable to a Complete Specification
- 2.23.13 Amendment of a Patent Request or of Other Filed Documents
- 2.23.13.1 Amendment of Patent Request
- 2.23.13.2 Amending a Standard Patent Request to an Innovation Patent
- 2.23.13.3 Amending a Non-Convention Patent Request to a Convention Patent Request
- 2.23.13.4 Amending a Convention Patent Request to a Non-Convention Patent Request
- 2.23.13.5 Amending Convention Particulars on a Patent Request
- 2.23.13.6 Adding a Second or Subsequent Basic Application to a Convention
- 2.23.13.7 Amending a Patent Request to a Patent Request for a Patent of Addition
- 2.23.13.8 Amendments to a Provisional Specification
- 2.23.13.8A Amendments to a Provisional Specification
- 2.23.13.9 Amending a Request for Examination
- 2.23.13.10 Amendments to "other filed documents"
- 2.23.14 Amendments During Section 59 Opposition and Section 101M Opposition Proceedings
- 2.23.14.1 General Comments
- 2.23.14.2 Issuing the Invitation
- 2.23.14.3 (reserved)
- 2.23.14.4 Considering the Amendments
- 2.23.14.4.1 Task Priority
- 2.23.14.4.2 Proposed Amendments are Allowable
- 2.23.14.4.3 Proposed Amendments are not Allowable
- 2.23.14.4.4 Further Proposed Amendments
- 2.23.14.4.5 Dealing with Comments
- 2.23.14.5 Amendments as a Result of a Decision
- 2.23.14.6 Opposing Allowance of the Amendments
- 2.23.14.7 Amendments Where Opposition Decision is Being Appealed
- 2.23.15 Opposition to Amendments
- 2.23.16 Amendment of Refused Application
- Annexes
- 2.24 Requesting and Directing Examination, Withdrawal, Lapsing, Extension of Term
- 2.24.1 Requesting and Directing Examination
- 2.24.2 Withdrawal of Applications (Section 141, Regulation 13.1A)
- 2.24.2.1 Withdrawal Opportunity and Effect
- 2.24.2.2 The Request for Withdrawal
- 2.24.2.3 PCT Application
- 2.24.2.4 Stated Disinterest in Proceeding with the Application
- 2.24.2.5 Indexing if Withdrawn After OPI
- 2.24.2.6 Amendments Proposed After Withdrawn
- 2.24.2.7 Related Applications
- 2.24.3 Lapsing of an Application
- 2.24.3.1 Lapsing Under Section 142
- 2.24.3.2 Lapsing for Non-payment of Continuation Fee
- 2.24.3.3 Lapsing Under Section 148
- 2.24.3.4 Lapsing Under Regulations 3.2A(5) and 3.2B(3)
- 2.24.3.5 Lapsing under Regulation 22.2B
- 2.24.4 Extension of Term (Chapter 6, Part 3)
- 2.24.5 Dealing with Lapsed, Withdrawn, Refused, Revoked, Ceased and Expired Cases
- 2.25 The Register of Patents (Chapter 19)
- 2.25.1 The Register
- 2.25.2 Entries in the Register
- 2.25.3 Registration of, and Amendment to, Particulars
- 2.25.4 Correction of the Register
- 2.25.5 Obtaining Information from Register
- 2.26 Employees, Delegations, Administration
- 2.26.1 Restrictions on Patent Office Staff (Sections 182-185)
- 2.26.1.1 Trafficking in Inventions, Trafficking Exemptions
- 2.26.1.2 Provision of Advice
- 2.26.1.3 Helping to Prepare Documents
- 2.26.1.4 Use of Search Material and Information
- 2.26.2 Conflict of Interest
- 2.26.3 Information Obtainable From the Commissioner (Section 194)
- 2.26.4 Delegations (Section 209)
- 2.26.4.1 Statutory Provisions
- 2.26.4.2 Types of Delegations Made by the Commissioner
- 2.26.4.3 Remaking Delegations
- 2.26.4.4 Revoking Delegations
- 2.26.4.5 General Issues Regarding Delegations
- 2.26.4.6 Preparation of Delegations
- 2.26.4.7 Implied Delegations
- 2.26.5 Secret Cases
- 2.27 Payment of Fees (Section 227)
- 2.27.1 Prescribed Fees
- 2.27.2 Fee Payment Basis
- 2.27.3 Fees Not Paid or Requested
- 2.27.4 When Refund or Transfer Not Available
- 2.27.5 Actioning of Requests for Refund or Exemption
- 2.27.6 Mention of Fee Treatment in Examiner's Report
- 2.27.7 Error or Omission in the Patent Office
- 2.27.8 Continuation Fee Timing
- 2.27.9 Exemption From Fees
- 2.27.10 Refund of Certain Fees Regulation 22.7(1)
- 2.28 Transitional and Savings Provisions
- 2.28.1 Introduction
- 2.28.2 Provisions of the Patents Act 1990 (as in Force Immediately Before 15 April 2013)
- 2.28.3 Patent Applications Filed, and Patents Granted, Under the Patents Act 1952
- 2.29 Formalities and Forms
- 2.29.1 Introduction
- 2.29.2 Fitness for Reproduction
- 2.29.3 Numbering of Pages
- 2.29.4 Substitute Pages of Specifications
- 2.29.5 Substitute Documents
- 2.29.6 Units and Terminology
- 2.29.7 Forms
- 2.29.8 Return or Deletion of Filed Documents
- 2.29.9 Requirements for Amino Acids and Nucelotide Sequences on Compact Disc
- 2.29.10 Signature Requirements for Received Documents
- 2.29.11 Drawings, Graphics and Photographs
- 2.29.12 Scandalous Matter
- 2.29.13 Numbering of Claims
- 2.30 Patent Deed
- 2.31 Innovation Patents
- 2.31.1 Features of the System
- 2.31.1.1 Introduction
- 2.31.1.2 Filing
- 2.31.1.3 Formalities Check
- 2.31.1.4 Acceptance and Grant
- 2.31.1.5 Examination
- 2.31.1.6 Certification
- 2.31.1.7 Opposition
- 2.31.1.8 Re-Examination
- 2.31.1.9 Ceasing/Expiring
- 2.31.1.10 Amendments
- 2.31.1.11 Notification by Third Parties
- 2.31.2 Types of Innovation Patent Application
- 2.31.2.1 Section 79B and Section 79C Divisional Applications
- 2.31.2.2 Association with Provisional Applications
- 2.31.2.3 Patents of Addition Innovation
- 2.31.2.4 Convention Applications
- 2.31.2.5 International (PCT) Applications
- 2.31.2.6 Parallel Applications
- 2.31.3 Formalities Check for Innovation Patents
- 2.31.4 Examination
- 2.31.4.1 Introduction
- 2.31.4.2 Period for Examination to be Carried Out
- 2.31.4.3 Grounds of Examination
- 2.31.4.3A Grounds of Examination
- 2.31.4.4 Ground (1): Section 40
- 2.31.4.5 Ground (2): Subsection 18(1A)
- 2.31.4.5.1 Requirements
- 2.31.4.5.2 Patentable Subject Matter (Manner of Manufacture)
- 2.31.4.5.3 Novelty
- 2.31.4.5.4 Innovative Step
- 2.31.4.5.4A Innovative Step
- 2.31.4.6 Ground (3): Subsections 18(2) and (3)
- 2.31.4.7 Amendments
- Annex A - Procedural Outline for Innovation Patent Application Formalities Check by Examiners
- Annex B - Procedural Outline for Examination of an Innovation Patent
- Annex C - Key Features of Innovation Patent System
- Annex D - Innovation Patent Certification Form
- 3. Oppositions, Disputes and Extensions
- 3.1 Role and Powers of the Commissioner in Hearings
- 3.2 Opposition, Disputes and Other Proceedings - Procedural Summaries
- 3.2.1 Section 59 - Opposition to Grant of a Standard Patent
- 3.2.1.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.1.2 Filing the Statement of Grounds and Particulars
- 3.2.1.3 Evidence and Evidentiary Periods
- 3.2.1.4 Finalising the Opposition
- 3.2.2 Section 101M - Opposition to an Innovation Patent
- 3.2.2.1 Commencing the Opposition - Filing the Opposition Documents
- 3.2.2.2 Evidence and Evidentiary Periods
- 3.2.2.3 Finalising the Opposition
- 3.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent
- 3.2.3.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.3.2 Filing the Statement of Grounds and Particulars
- 3.2.3.3 Evidence and Evidentiary Periods
- 3.2.3.4 Finalising the Opposition
- 3.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document
- 3.2.4.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.4.2 Filing the Statement of Grounds and Particulars
- 3.2.4.3 Evidence and Evidentiary Periods
- 3.2.4.4 Finalising the Opposition
- 3.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)
- 3.2.5.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.5.2 Filing the Statement of Grounds and Particulars
- 3.2.5.3 Evidence and Evidentiary Periods
- 3.2.5.4 Finalising the Opposition
- 3.2.6 Reg 22.21(4) - Opposition to Grant of a Licence
- 3.2.6.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.6.2 Filing the Statement of Grounds and Particulars
- 3.2.6.3 Evidence and Evidentiary Periods
- 3.2.6.4 Finalising the Opposition
- 3.2.7 Sections 17 & 32 - Disputes Between Applicants and Co-Owners
- 3.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A
- 3.3 Directions
- 3.3.1 Directions in Opposition Proceedings
- 3.3.1.1 Direction to Stay an Opposition Pending Another Action
- 3.3.1.2 Further and Better Particulars
- 3.3.1.3 Time for Filing Evidence in a Substantive Opposition
- 3.3.1.4 Time for Filing Evidence in a Procedural Opposition
- 3.3.1.5 General Conduct of Proceedings
- 3.3.1.6 Further Directions
- 3.3.2 Directions that an Application Proceed in Different Name(s) - Section 113
- 3.4 Opposition Documents - Requirements and Amendments
- 3.4.1 The Notice of Opposition
- 3.4.2 The Statement of Grounds and Particulars
- 3.4.3 Amending Opposition Documents
- 3.4.4 Filing Opposition Documents
- 3.5 Evidence
- 3.5.1 Presentation of Evidence
- 3.5.1.1 Written Evidence and Declarations
- 3.5.1.2 Oral Evidence
- 3.5.1.3 Physical Evidence - Special Considerations
- 3.5.2 Admissibility of Evidence
- 3.5.3 Evidence Filed Out of Time
- 3.6 Production of Documents, Summonsing Witnesses
- 3.6.1 Requests for the Commissioner to Exercise Powers under Section 210(a) and (c)
- 3.6.2 Basis for Issuing a Summons
- 3.6.3 Basis for Requiring Production
- 3.6.4 Reasonable Expenses
- 3.6.5 Complying with the Notice or Summons, Reasonable Excuses
- 3.6.6 Sanctions for Non-Compliance
- 3.6.7 Schedule to Requests for Summons or Notice to Produce
- 3.7 Withdrawal and Dismissal of an Opposition
- 3.7.1 Withdrawal of an Opposition
- 3.7.2 Dismissal of an Opposition
- 3.7.2.1 Requests for Dismissal
- 3.7.2.2 Dismissal on the Initiative of the Commissioner
- 3.7.2.3 Reasons for Dismissal
- 3.7.3 Withdrawal of an Opposed Application
- 3.8 Hearings and Decisions
- 3.8.1 Setting Down Hearings
- 3.8.1.1 Setting of Hearing
- 3.8.1.2 Location and Options for Appearing
- 3.8.1.3 Hours of a Hearing
- 3.8.1.4 Hearing Fee
- 3.8.1.5 Who May Appear at a Hearing?
- 3.8.1.6 Relevant Court Actions Pending
- 3.8.2 Hearings Procedure
- 3.8.2.1 Overview of Proceedings
- 3.8.2.2 Adjournment of Hearings
- 3.8.2.3 Contact with Parties Outside of Hearing
- 3.8.2.4 Hearings Involving Confidential Material
- 3.8.2.5 Consultation with Other Hearing Officers
- 3.8.2.6 Hearings and the Police
- 3.8.3 Ex Parte Hearings
- 3.8.4 Natural Justice and Bias
- 3.8.4.1 Rules
- 3.8.4.2 Waiving of Objection of Bias by Standing by until Decision Issued
- 3.8.4.3 Bias as a Result of Contact with Parties Outside of Hearing
- 3.8.4.4 Bias as a Result of Other Proceedings Involving the Same Parties
- 3.8.5 Principles of Conduct
- 3.8.5.1 Lawfulness
- 3.8.5.2 Fairness
- 3.8.5.3 Rationality
- 3.8.5.4 Openness
- 3.8.5.5 Diligence and Efficiency
- 3.8.5.6 Courtesy and Integrity
- 3.8.6 Decisions
- 3.8.6.1 Written Decisions
- 3.8.6.2 Time for Issuing a Decision
- 3.8.6.3 Publication of Decisions
- 3.8.6.4 Rectification of Errors or Omissions in Decisions
- 3.8.6.5 Revocation of Decisions
- 3.8.7 Further Hearings
- 3.8.8 Final Determinations
- 3.8.8.1 Overview of Proceedings
- 3.8.8.2 Applicant Does Not Propose Amendments
- 3.8.8.3 Opponent Withdraws the Opposition
- 3.8.9 Quality
- 3.8.10 Appointment of Hearing Officers and Assistant Hearing Officers, Hearing Officer Standards Panel, Hearing Officer Delegations
- 3.9 Costs
- 3.9.1 Principles in Awarding Costs
- 3.9.2 Scale of Costs, Variation of the Scale
- 3.9.3 Awarding Costs, Taxation
- 3.9.4 Security for Costs
- 3.9.5 Exemplary Situations in Awarding Costs
- 3.10 The Register of Patents
- 3.10.1 What is the Register?
- 3.10.2 Recording Particulars in the Register
- 3.10.2.1 Recording New Particulars in the Register
- 3.10.2.2 Change of Ownership
- 3.10.2.2.1 Assignment
- 3.10.2.2.2 Change of Name
- 3.10.2.2.3 Bankruptcy
- 3.10.2.2.4 Winding Up of Companies
- 3.10.2.2.5 Death of Patentee
- 3.10.2.3 Security Interests
- 3.10.2.4 Licences
- 3.10.2.5 Court Orders
- 3.10.2.6 Equitable Interests
- 3.10.2.7 Effect of Registration or Non-Registration
- 3.10.2.8 Trusts
- 3.10.2.9 False Entries in the Register
- 3.10.3 Amendment of the Register
- 3.11 Extensions of Time and Restoration of the Right of Priority
- 3.11.1 Extensions of Time - Section 223
- 3.11.1.1 Relevant Act
- 3.11.1.2 Subsection 223(1) - Office Error
- 3.11.1.2.1 Extensions under Subsection 223(1) to Gain Acceptance
- Annex A - Section 223(1) Extension of Time for Acceptance File Note
- 3.11.1.3 Subsection 223(2) - Error or Omission and Circumstances Beyond Control
- 3.11.1.3.1 The Law
- 3.11.1.3.2 Subsection 223(2)(a) - Error or Omission
- 3.11.1.3.3 Section 223(2)(b) - Circumstances Beyond Control
- 3.11.1.3.4 Filing a Request under Subsection 223(2)
- 3.11.1.3.5 The Commissioner's Discretion
- 3.11.1.4 Subsection 223(2A) - Despite Due Care
- 3.11.1.5 Common Deficiencies in Requests under Section 223(2) or (2A)
- 3.11.1.6 Advertising an Extension - Subsection 223(4)
- 3.11.1.7 Extension of Time for an Extension of Term
- 3.11.1.8 Grace Period Extensions
- 3.11.1.9 Extension of Time to Gain Acceptance
- 3.11.1.10 Examination Report Delayed or Not Received
- 3.11.1.11 Co-pending Section 104 Application - Budapest Treaty Details
- 3.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Applicaiton
- 3.11.1.13 Person Concerned: Change of Ownership
- 3.11.1.14 Date of a Patent Where an Extension of Time is Granted to Claim Priority
- 3.11.2 Extensions of Time - Reg 5.9
- 3.11.2.1 Requesting an Extension of Time
- 3.11.2.2 Application of the Law
- 3.11.2.3 Justification for the Extension
- 3.11.2.4 Discretionary Matters
- 3.11.2.5 Period of an Extension
- 3.11.2.6 A Hearing in Relation to an Extension
- 3.11.2.7 Parties Involved in Negotiations
- 3.11.2.8 Review of a Decision to Grant or Refuse an Extension
- 3.11.2.9 "Out of Time" Evidence
- 3.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)
- 3.11.4 Restoration of the Right of Priority under the PCT
- 3.12 Extension of Term of Standard Patents Relating to Pharmaceutical Substances
- 3.12.1 Section 70 Considerations
- 3.12.1.1 Pharmaceutical Substance per se
- 3.12.1.2 Meaning of Pharmaceutical Substance
- 3.12.1.3 Meaning of "when produced by a process that involves the use of recombinant DNA technology"
- 3.12.1.4 Meaning of "mixture or compound of substances"
- 3.12.1.5 Meaning of "in substance disclosed"
- 3.12.1.6 Meaning of "in substance fall within the scope of the claim"
- 3.12.1.7 Included in the Goods
- 3.12.1.8 First Regulatory Approval Date
- 3.12.2 Applying for an Extension of Term
- 3.12.2.1 Documentation Required
- 3.12.2.2 Time for Applying
- 3.12.2.3 Extension of Time to Apply for an Extension of Term
- 3.12.3 Processing an Application for an Extension of Term
- 3.12.3.1 Initial Processing
- 3.12.3.2 Consideration of the Application
- 3.12.3.3 Grant of Application for Extension of Term
- 3.12.3.4 Refusal of Application for Extension of Term
- 3.12.4 Calculating the Length of the Extension of Term
- 3.12.5 Patents of Addition
- 3.12.6 Divisional Applications
- 3.12.7 Opposition to Extension of Term
- 3.12.8 Relevant Court Proceedings Pending
- 3.12.9 Rectification of the Register
- 3.13 Documents not OPI - Orders for Inspection
- 3.13.1 Documents not-OPI by direction of the Commissioner - Regulation 4.3(2)(b)
- 3.13.2 Inspection of non-OPI documents
- 3.14 Appeals, AAT and Judicial Review, Other Court Actions Involving the Commissioner, Section 105 Amendments
- 3.14.1 Appeals to the Federal Court
- 3.14.2 AAT Review
- 3.14.3 Judicial Review
- 3.14.4 Other Court Actions Involving the Commissioner
- 3.14.5 Section 105 Amendments
- 3.15 Computerised Decisions
- 4.1 Searching
- 4.1.1 Objectives of the Search
- 4.1.2 Search Theory
- 4.1.3 Initial Search Considerations
- 4.1.3.1 Construction and the Inventive Concept
- 4.1.3.2 Earlier Search Results
- 4.1.3.3 Additional Searching
- 4.1.3.4 Top-Up Searching
- 4.1.3.5 Preliminary Search
- 4.1.3.6 Applicant and/or Inventor Name Searching
- 4.1.4 Development of the Search Strategy
- 4.1.4.1 Three Person Team (3PT)
- 4.1.4.2 Search Strategy Considerations
- 4.1.4.2.1 Independent Claims
- 4.1.4.2.2 Dependent Claims
- 4.1.4.2.3 Broad Claims
- 4.1.4.2.4 Reserving the Search
- 4.1.4.2.5 Controlled Language
- 4.1.4.3 Search Area
- 4.1.5 Conducting the Search
- 4.1.6 Recording the Search Details
- Annexes
2.12.1.1A Priority Date of Claims
Note: The information in this part only applies to:
- standard patent applications with an examination request filed on or after 15 April 2013.
- innovation patents with an examination request filed on or after 15 April 2013.
- innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.
For all other standard patent applications/innovation patents, see 2.12.1.1 Priority Date of Claims.
General
Under sec 43(1), each claim of a specification must have a priority date. The priority date of a claim is primarily of relevance when assessing the claim against the criteria of novelty and inventive/innovative step.
The actual priority date of a claim is determined by the provisions of the Act and Regulations. However, during search and/or examination it should not usually be necessary in the first instance to determine the actual priority date of a claim. When conducting a search, examiners should keep in mind both the earliest priority date and the latest possible priority date (i.e. the date of filing). If, as a result of the search, a document is found which would constitute a citation against a claim only if the claim is not entitled to the earlier priority date, examiners should proceed to determine the priority date of the claim in question.
However, where the determination of priority dates is difficult or time consuming, it is not unreasonable to take the date of filing as the prima facie priority date, with the onus of rebuttal being placed upon the applicant or attorney.
Note: In certain situations, an application under examination may claim priority from a published document, such as a PCT application. That PCT application may in turn have its own priority document, which may have been filed more than 12 months before the filing date of the application being examined. Where these circumstances arise, examiners should check the priority date of the claims.
Note: In relation to an international application, reg 3.5AE and reg 4.4, and Article 2(xi) of the PCT, define a "priority date" for the application for the purposes of computing time limits. This has no bearing on the priority date of claims as discussed below.
Determination of Priority Dates
Under sec 43(2), the priority date of a claim is the date of the filing of the specification, unless certain circumstances apply. In these situations, the priority date is the date determined under the Regulations.
A single complete application may derive priority by operation of more than one provision of the Act and Regulations, for example as a Convention application, a divisional application or by association with a provisional application. Priority dates are determined by Chapter 3, Division 2 of Part 1 of the Regulations, comprising reg 3.12 to reg 3.13E.
In general, if a claim defines an invention that is disclosed in a priority document or a "parent application" (for a complete specification filed in respect of a divisional application) in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art, then the priority date of the claim is the date of filing the priority document or "parent application".
It must be noted that when determining priority, it is permissible to have regard to the combined disclosure of all the documents filed for a provisional, earlier or basic application that were filed on the date the application was filed. For example, if the abstract and specification that were both filed with the earlier priority application, when taken together, disclose the invention claimed in the complete specification in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, the priority date of the claim is the filing date of the priority application. This is the case even if the abstract on its own, or the specification on its own, does not disclose the claimed invention.
Regulation 3.13 provides for most priority dates including:
- reg 3.13A - claims of the specification of a PCT application which may have one or more earlier Australian applications, or one or more basic applications;
- reg 3.13B - claims of the specification of a Convention application, where there may be one or more related basic applications;
- reg 3.13C - claims of a complete specification associated with one or more provisional specifications;
- reg 3.13 D - claims of a complete specification filed pursuant to sec 79B (divisional applications filed prior to grant); and
- reg 3.13E - claims of a complete specification filed pursuant to sec 79C (divisional applications for innovation patents).
These regulations require that the priority document(s) “clearly discloses” the invention claimed. Subregulation 3.12(4) provides that a priority document “clearly discloses” an invention if the document discloses the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
Note: Special priority considerations which apply to applications made under the PCT route are discussed in 2.20.5.1 Priority Sources.
In certain circumstances, the Act and Regulations may also determine further priority dates different from the date of filing of the complete specification.
The provisions which cover these priority dates are:
- sec 35, sec 36 and sec 43(2)(a) and reg 3.13 – where claims of a complete specification are filed pursuant to the operation of sec 35 and sec 36; and
- sec 114 and reg 3.14 – where claims of a complete specification claim an invention disclosed in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art only as a result of the amendment (see also 2.12.1.4A Priority Date Issues Relating to Amended Claims).
Micro-Organisms
The Regulations also set out the procedure for determining priority dates when the claimed invention relates to a micro-organism. The procedure varies depending upon certain timing requirements as indicated below.
- For:
- standard patent applications/innovation patents with an examination request filed on or after 25 August 2015; or
- innovation patents where the Commissioner had not decided before 25 August 2015 to examine the patent;
if:
- the specification of the priority application included such relevant information about the micro-organism as was known to the applicant at the filing date of the application;
- the requirements of sec 6(c) are met in relation to the complete specification that contains the claim (to the micro-organism); and
- the micro-organism was deposited with a prescribed depository institution on or before the filing date of the priority application;
then the priority application is considered to disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. In this situation the priority date is the filing date of the priority application.
The Regulations recognise (in the same way as in sec 41) that an invention involving a micro-organism may not be practically disclosed in a written specification and that a deposit under the Budapest Treaty should be taken into account for the purpose of determining priority dates.
2. For all other standard patent applications/innovation patents, if:
- the specification of the priority application included such relevant information about the micro-organism as was known to the applicant at the filing date of the application;
- the priority application discloses the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, other than in relation to the description of the micro-organism;
- the requirements of sec 6 (c) are met in relation to the complete specification; and
- the micro-organism was deposited with a prescribed depository institution on or before the filing date of the priority application;
then the priority date may be the filing date of the priority application.
The Regulations recognise (in the same way as in sec 41) that an invention involving a micro-organism may not be practically disclosed in a written specification and that a deposit under the Budapest Treaty should be taken into account for the purpose of determining priority dates.
This is implemented on the basis that the complete specification meeting the requirements of sec 6(c) is specified as a priority document for the purpose of sec 43 and, under sec 41, is taken to provide an enabling disclosure of the invention including the micro-organism. The priority date, however, is the filing date of the priority application, provided the other conditions are met, including that the deposit is made on or before that date.
Level of Disclosure Required
The priority date of a claim is the date of filing of a specification which first discloses the claimed invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art and from which the claim is entitled to claim priority. The disclosure required in a priority document is substantially the same as the enabling disclosure required for the purposes of sec 40(2)(a) (see 2.11.3.4.2A Section 40 Enabling Disclosures).
If a priority document is silent with regard to any essential element of a claim, the claim is not entitled to an earlier priority date. In particular, if a claim in a priority document is broad enough to cover a certain technical feature, it does not follow that it discloses that feature for the purpose of establishing priority. Nevertheless, implicit disclosure of a feature can be taken into account if the feature would have been derived “directly and unambiguously, using common general knowledge, from the previous application as a whole” (G 298) (see also paragraph below).
A claim may properly derive priority from a prior specification where the specific matter added to the disclosure of that specification is common general knowledge (Scherico Ltd.'s Appln. (1968) RPC 407). For example, if the prior specification does not disclose the material of which a particular part is made, but it is common general knowledge (at the relevant date) that such a part may be made of a certain material, then the specification may be regarded as disclosing the part made of that material. If examiners are unaware that certain matter is common general knowledge, it may be assumed not to be until evidence to the contrary is provided. The extent and nature of the evidence required is the same as that required of examiners citing common general knowledge during examination.
Selections
Where an invention resides in a selection, the claims of a complete specification will not be enabled by the disclosure of a priority document, if the priority document did not provide a clear enough and complete enough (enabling) disclosure of the inventive selection. This should be particularly kept in mind where, as a result of an amendment in response to a novelty and/or inventive step objection, the invention of the complete specification becomes one of selection, or becomes a materially different selection from that originally disclosed in the priority document (see Cooper's Animal Health v Western Stock Distributors (1987) 11 IPR 20). However, where a feature in a claim is merely restricted to a subset of alternatives taught in the specification and the alternatives are taught in the priority document, the priority document will contain a sufficiently enabling disclosure of the claimed subset.
Claims With More Than One Priority Date
A claim may possess more than one priority date. Under sec 43(3), where a claim of a complete specification defines more than one form of an invention, then the claim must be treated as constituting a separate claim for each form of the invention for priority date purposes. Consequently, a claim may possess more than one priority date. Examples where this may occur include:
- a claim directed to alternative forms first disclosed in separate documents;
- a claim appended to a number of claims having different priority dates;
- an omnibus claim referring to drawings or examples disclosed on different dates.
In this case, the words "form of the invention" mean matter which clearly falls within the concept of the invention, as the claiming of different inventions in one claim is precluded under sec 40(4). Each separate "form of the invention" can, by virtue of sec 43(1), have only one priority date.
However, as discussed in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [251]; 107 IPR 177, not every potential variant of the defined invention can be treated as a different form of the invention which is to be given its own priority date.
Whether an invention has different forms was also considered in Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699 at [58] – [87]. In this case, the claims were cast in terms that envisaged and provided for different forms of the invention, in contrast to the claims considered in AstraZeneca supra.
Specifications Containing Claims With Different Priority Dates
Under sec 43(4), the claims of a specification may have different priority dates. These different dates may result from, for example, a complete specification deriving priority from more than one priority document, or in the case of a divisional application, from more than one “parent application”.
Case Law
The following decisions determined priority dates in the context of fair basis, however the circumstances of each case are relevant to whether the priority document provided a clear enough and complete enough (enabling) disclosure of the claimed invention:
- In the absence of any suggestion in the complete specification that there was invention in restricting the starting materials claimed, compared with those disclosed in the provisional specification, the claims were entitled to the earliest priority date, i.e. the filing date of the provisional.
British Drug Houses Ltd.'s Appln. (1964) RPC 237
- Where claims in a specification omit a feature described in a priority document as essential to the invention, the priority document does not provide a clear enough and complete enough (enabling) disclosure of the claimed invention.
International Playtex Inc.'s Appln. (1979) AOJP 1188
- Where two features of the claims were not disclosed in the provisional specification, the claims were only entitled to the later priority date, i.e. the filing date of the complete specification.
Dunn v Ward 1 IPR 595
- An essential constituent of a claimed formulation was a particular solvent in a specified quantity. This solvent was mentioned in the provisional specification only as one of a number of possible alternatives and other solvents were discussed in a more favourable light. The special advantages arising from the use of the particular solvent were not apparent from a reading of the provisional specification.
The Court found that identification of that constituent as a key element of the claimed invention could properly be regarded as involving an inventive step. A relevant factor in the decision was that the claimed invention was the formulation, whereas the invention disclosed in the provisional specification was a method of treating sheep.
In this situation, a conclusion that the provisional specification lacked a clear enough and complete enough (enabling) disclosure would not be because a feature which was optional in the provisional specification was included in the claim. Instead, it would be based on the conclusion that the whole nature of the invention had changed between the provisional and complete specifications.
Cooper's Animal Health v Western Stock Distributors 11 IPR 20