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Situations frequently arise where examiners may resolve minor issues by phoning the applicant or attorney.  In the case of phone queries from applicants or attorneys, examiners should use their judgement in deciding whether to ask a senior examiner or supervising examiner to deal with the matter.  Factors to be taken into account include the complexity of the case and, where private applicants are involved, their level of understanding of patent law and office procedures.  Issues of providing information, as opposed to advice, also need to be carefully considered. Examiners should not hesitate to defer committing themselves on an issue in order to obtain additional information or consider the matter further. For example, where the applicant or attorney responds to a report by phone and proceeds to provide comprehensive submissions in rebuttal, it is recommended that examiners ask for the submissions to be filed to enable a more detailed consideration of them.

Note: General queries from applicants or attorneys relating to service requests, for example filing of documents via eServices, should be referred to COG.

Records of Conversation

As a general rule, a record of all phone conversations with applicants or attorneys must be added to every case file to which the conversation is relevant.  This applies whether it is the examiner or the applicant/attorney who has initiated the conversation.  The record should include the date and time, the name of the person with whom the conversation took place, a brief summary of the discussion and any follow-up action to be taken.  Examples of such action include the issue of a further report or written confirmation of proposed amendments.  Conversations should be recorded following the procedures outlined in 5.10.20 Recording Conversations as a File Note.

Examiners should advise the applicant/attorney that a record of the conversation will be made and placed on file.  Where the applicant/attorney expresses any concerns, they should be referred to IP Australia’s Privacy Policy which explains in greater detail the Office’s procedures for handling personal information.  

Records of conversation should include anything relevant to an official decision, however examiners should ensure that this is the only information that is recorded.  In this regard examiners should follow the principles outlined below: 

  • Discretion should be used in determining what should be included in the record of conversation, bearing in mind that this may be read by the general public.

  • Unrelated and irrelevant matters should not be recorded; records should be succinct and factual.

  • Any third parties mentioned in the conversation, or any information that could identify a third party such as a patent or application number that is unrelated to the matter at hand, should not be recorded for privacy reasons.

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