Every published document referred to in the notice should be taken into account, to the extent practicable. This is notwithstanding any failure to meet the requirements referred to in 2.13.11.1 Notifications, for example the provision of a translation.

If the assertion made in the notice is such as to affect the validity of any patent (if issued), and examiners consider that assertion to be supported by the documents referred to in the notice, an appropriate objection is to be included in either the first or further report, depending on when the notice is filed.

Examiners may consider matter published in documents including books, patent specifications, periodicals and similar publications. Matter made publicly available through prior use or by oral communication may also be taken into account. This includes declarations by persons allegedly having seen or used the invention, or alleged actual samples of the invention, or statements where the invention may be inspected or publicly seen.

Publication Date

Before citing a document accompanying a notice under sec 27(1), examiners must be satisfied that the document was in fact published before the relevant priority date. Provided the date of publication is clearly and unambiguously given, examiners are entitled to consider the matter.

In Roberts Mfg. Inc.'s Application (1977) AOJP 2345, a declaration stating that certain brochures were available "early in January 1972", together with other evidence which failed to specify exact dates, was held to be insufficient to establish publication before the priority date of 14 February 1972. At page 2346 it was stated that:

"In view of the fact that the priority date is ... (close to the date of alleged publication) ... a more accurate indication of the date when any person may have received such a brochure by post, or otherwise, appears to me to be essential in order to establish publication for the purposes of taking a definite objection under section 48(3)."

Incorrect Translation of Documents

Note: The information in this part only applies to translations filed after 25 September 2019.

Where a document accompanying a sec 27 notice is not in English, the person filing the notice is required to provide a translation (see 2.13.11.1 Notifications).

Where examiners have any doubts about the accuracy of the translation of a document, they should first consult Patent Oppositions. If Patent Oppositions are in agreement, then the person who filed the notice should be requested to file either:

a corrected translation of the document and a certificate of verification for the corrected translation; or
a certificate of verification for the translation.

Examiners should contact COG (via email to era@ipaustralia.gov.au) with a request that a corrected translation and/or certificate of verification be obtained from the person who filed the notice under the provisions of reg 22.15A. Examiners should clearly identify the relevant document(s) in their request. COG will issue a notification to the person and allow them a 2 month period in which to respond.

Examiners should in the meantime issue the examination report. As a novelty or inventive step objection may be raised based on the corrected/verified translation once received, it is possible that the final date for acceptance may extend beyond the 12 month period that usually applies. In this situation examiners should follow the procedures outlined in 2.15.7.2 Objections Based on a Section 27 Notice, Documents From Section 27 Notice – Outstanding Request for Corrected Translation or Certificate of Verification.

Notices Received After Issue of Adverse Report

Notices received after an adverse report has been issued are added to the Ecase, but are not referred to the relevant examination section until a response is received to the previous report. Any objections based on such notices must be raised in the next adverse report that issues. Where a novelty or inventive step objection is taken for the first time as a consequence of the filing of a sec 27 notice, the applicant has 3 months from the date of the adverse report to respond, regardless of whether that 3 month period extends beyond the 12 month period for acceptance (reg 13.4(1)(l)(i)). In this situation, examiners should follow the procedures outlined in 2.15.7.2 Objections Based on a Section 27 Notice for extending the period for acceptance.