Subsection 27(1) enables any person to file a notice asserting that the invention of a complete specification filed in relation to a standard patent application is not a patentable invention due to non-compliance with sec 18(1)(b). The notice must be filed between OPI and 3 months after publication in the Official Journal of acceptance of an application for a standard patent. Notices received before the OPI date are deemed not to have been filed and may not be considered in subsequent proceedings. Wherever practicable, arrangements may be made for the return of any premature notices to the original person.

During examination, examiners are required to consider matters stated in any notice filed prior to acceptance (reg 3.18(4)). Where an objection is appropriate based on the matter filed, this is to be included in either a first or further report, depending on when the notice was filed. If a notice is filed after acceptance, it may instead form the basis of a pre-grant re-examination under sec 97(1). Section 27 is not intended to be an informal type of opposition proceedings before examiners, and there is no provision in either the Act or Regulations for argument or filing of counter-evidence.

Note: Under sec 28, a person may file a notice asserting that an innovation patent is invalid (see 2.31.1.11 Notification by Third Parties). The following considerations similarly apply to sec 28 notices.

Notice Requirements

Notices may be sent to the Commissioner by mail or filed electronically via eServices (using the General eService Request form for Patents) or via AusPat (this will generate an email to IP Australia).

The notice must contain:

a full identification of the application to which the notice relates;
reasons why the validity of any patent issued on the application would be affected under sec 18(1)(b); and
a copy of any document referred to in the reasons, or a reference or URL link to the document.

If the published document is not a patent, the notice must in addition be accompanied by evidence establishing where and when that document was published (if this is not apparent from the document itself).

If a document is not in English (whether patent or non-patent), a translation must be provided. (For translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided). Any documents accompanying the notice are OPI.

Filing of Notice

It is the responsibility of the person filing a notice under sec 27(1) to ensure the correctness of the contents of the statement or any other accompanying documents. Notices are not subject to examination and, pursuant to sec 27(2), the Commissioner will inform the applicant of any matter to which the notice relates without any verification of that matter. There is no limitation on the number of notices under sec 27(1) which may be filed by the same person, or by a number of persons.

Notices filed pursuant to sec 27(1) are inspected by COG to ensure that they are properly filed. The inspection is of the notice only and does not extend to any attachments. Notices duly filed before commencement of examination are added to the Ecase under the document name ‘Notices under subsection 27(1)’.

Any notice filed after acceptance will be drawn to the attention of the supervising examiner of the relevant section who will consider, in conjunction with Patent Oppositions, whether re-examination of the application should be carried out. This consideration should not be undertaken until after the deadline for filing sec 27(1) notices has expired, to ensure that all material filed up to that time is taken into consideration in a consolidated process.

Any purported notice under sec 27(1) which is received out of time is to be referred to the Assistant General Manager (OEP).