2.2.2 "Private Applicant" Cases

In this topic:

General

When a private applicant files a provisional application, it is Office practice to forward explanatory information detailing formal requirements. Examiners should also include with their first report appropriate additional information as required.

Private applicants are to be advised that if they wish to seek personal help in processing their application, they should contact a patent attorney. The Office does not prepare lists of patent attorneys. Accordingly, it should be suggested to private applicants that they consult the Yellow Pages or contact the Institute of Patent Attorneys of Australia. Under no circumstances should examiners recommend or nominate a particular attorney or firm of attorneys.

Reasons why private applicants do not use the services of a patent attorney may include ignorance of the existence of the profession and cost. Some applicants are capable of obtaining a patent without using the services of a patent attorney. Examiners must therefore avoid any suggestion, expressed or implied, that applicants must seek the services of a patent attorney in order to prosecute their application.

Note: Any additional information to be sent to a private applicant, e.g. copies of patent documents, should be attached to the examination report using the ‘Attach File’ function in PAMS (see 5.6.1.2 Examiner Correspondence Screen).

Types of Private Applicant and Examination Approach

Private applicants fall roughly into three categories and therefore the approach to examination should be varied accordingly.

1. Private Applicants With Previous Experience

There are relatively few private applicants who have had previous experience in prosecuting applications. The specification will usually contain fairly well drafted claims and description, and prior applications by that applicant will often be noted in the particular area of technology. For this category of applicant, no additional information need be provided with the report.  The usual type of report should be written, although with slightly more explanation than if the report was being written for a patent attorney.

2. Private Applicants With Little Experience

These applicants have little to no prior experience in prosecuting patent applications, but have obviously obtained sufficient information to have made a good attempt. The claims of the specification may have significant defects, but are nevertheless reasonable attempts at defining the invention. For this category of applicant, the usual type of report should be written, although particular care must be taken to ensure that each objection is expressed fully and clearly in terms that the inexperienced applicant might be expected to understand. The information provided in “Responding to an Examination Report”, which is available from the IP Australia website, should be included with the report.

3. Private Applicants With a Poor Understanding of Patent Application Requirements

This category of applicant is invariably identified by the claims which, if they exist, do not define anything, or else claim each element of a combination separately. For this category of applicant the following approach should be adopted:

• where there are no claims present, an objection to this effect should be included in the report (see for example PERP code [R37]).

• where any of the claims present are unsearchable, examiners should carefully ascertain from the description what the alleged invention is. A search should then be conducted to determine whether or not the invention is novel and patentable and a note included in the report to indicate the field that has been searched. A search must not be reserved simply because the claims are unsatisfactory; it must also be impossible to determine the inventive concept from the description (see also 4.1 Searching).

• where, after conducting the search, it is concluded that it would not be possible to draft proper claims that define a novel and patentable invention, then this should be the primary substance of the first report, supported by clear and detailed reasoning.

• where it is concluded that there is a novel and patentable invention, then the aim of the report is to provide guidance to the applicant. In doing so, examiners must avoid drafting claims for the applicant.

Examiners should ensure that the report includes sufficient detail and is written in a clear manner such that it is readily understood by the applicant.  Where examiners have any concerns or doubts regarding the content of the report, they should consult a senior examiner.

Examiners should not write lengthy essays to explain relevant examination aspects. Instead, the report should be accompanied by at least the information provided in “Responding to an Examination Report”. Any explanations given in the report should then be restricted to cross-references to parts of this information or other general information on applying for a patent available from the IP Australia website (see in particular  "How to apply for a standard patent",  "How to write a specification for your patent application" and "How to make changes to your application".)

Examiners should include copies of any cited patent documents with their report.  Where non-patent literature has been cited, the procedures outlined in 2.1.7.5 Non-Patent Literature should be followed.  If there are no citations, or none of the citations are accepted or granted patent specifications, examiners should also provide a copy of at least one accepted/granted patent specification from the relevant technology.  This will provide the applicant with examples of the manner in which inventions in the particular field have been described and claimed.

Where it is evident that the applicant has a poor knowledge of English, particular care should be taken to ensure that the language used in the report is clear and readily understood.

Depending on the nature of the invention, it is sometimes unavoidable that serious objections will arise at further report stage. Where this situation seems likely, appropriate explanations of the relevant law should if possible be included in the first report in order to assist the applicant.

Report Requirements Renewal Fee Payments

Many private applicants are unaware of the need to pay continuation or renewal fees. Therefore examiners must include the following text at the end of any adverse examination report:

In the case of a patent application:

“You must pay continuation fees by when they are due or your patent application will lapse. Please note that you will not be notified by the Office of any due dates for the payment of fees. You will need to keep track of this yourself. Information about the fees that you will need to pay and when they will be due may be obtained by phoning 1300 651010."

In the case of a patent:

“You must pay annual renewal fees by when they are due or your patent will cease. Please note that you will not be notified by the Office of any due dates for the payment of fees. You will need to keep track of this yourself. For innovation patents, the first of these fees is usually due two years from the filing date, however depending on the circumstances of your application, another date may apply. Information about the fees that you will need to pay and when they will be due may be obtained by phoning 1300 651010.”

(see PERP code [R71])

Where a further report cannot be issued before the application goes into a state of lapse, a note should be included at the end of the report that the unpaid fee can be paid within 6 months after the due date, provided it is accompanied by the appropriate late payment fee. The note should also state that the late payment fee is (the current fee) per month, or part thereof that the continuation fee is overdue.