2.21.3.5A Basic Application Outside 12 Month Convention Period

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 2.21.3.5 Basic Application Outside 12 Month Convention Period.

In this topic:

Overview

If there are claims in a specification which are enabled by a disclosure in a basic application made more than 12 months before the date of filing of an Australian application, and sec 43(5) does not apply (see below),  then those claims do not satisfy the conditions of reg 3.11 (reg 8.5(2))* and cannot take the filing date of the basic application as their priority date (reg 3.13B).

This is irrespective of whether those same claims are enabled by a disclosure of a basic application filed within the 12 month period permitted by reg 3.11 (reg 8.5(2))*.

Where sec 43(5) does not apply, examiners should object that the Australian application does not meet the requirements of a Convention application.

See also 2.12.1.3A Priority Date Issues Specific to Convention Applications for determination of the priority date in this situation.

*Note: Regulation 8.5(2) only applies to Convention applications filed before 15 April 2013.

Subsection 43(5)

Where the claims are enabled by the disclosure of both:

• a basic application made more than 12 months before the filing date of the Convention application (the ‘earlier application’); and
• a basic application filed within 12 months of filing the Convention application (the ‘later application’);

and the applicant wants the claims in the Convention application to take the filing date of the later application as their priority date, this is only possible if the earlier application can be disregarded for the purposes of the Act (sec 43(5)) (see also Mobil Oil Corporation's Application (1975) AOJP 1277, which was concerned with a corresponding, but non-identical, provision in the Patents Act 1952).

In order for sec 43(5) to apply, the following requirements must be met:

• an earlier application must have been made in a Convention country for protection of the invention;
• the earlier application must have been made more than 12 months before the filing of the Convention application (reg 3.14C);
• the earlier application must have been withdrawn, abandoned or refused without becoming open to public inspection (OPI) anywhere in the world;
• the earlier application must not have been used as the basis of claiming a right of priority in any Convention country; and
• a later application must have been made in a Convention country for the same invention for which the earlier application was made, and the later application must have been made by the same applicant who made the earlier application.  Note that the earlier and later applications need not have been made in the same Convention country.

Without becoming “open to public inspection" is limited to the time when a Convention application is made for a patent in Australia.  

Note: A special case exists with US continuation-in-part applications where the parent specification has been abandoned.  The abandoned parent specification usually becomes OPI on the issue of the patent on the continuation-in-part application.  Provided it was abandoned and not OPI when the Convention application was made in Australia, sec 43(5) can apply.

Examination Practice

If an applicant indicates that an earlier application is to be disregarded under sec 43(5), examiners should consider the matter during examination.  

Where the sec 43(5) requirements are met, the examination report should indicate that the earlier application has been disregarded.  

If the requirements are not met, the report should explain the reasons why the earlier application cannot be disregarded.  Examiners should also object that pending resolution of this matter, the application under examination does not meet the requirements of a Convention application.  

Where the requirements are met and the case is in order for acceptance, the fact that the earlier application has been disregarded should be indicated on the ‘Acceptance Information’ screen in PAMS (screen 4 of 7) (or, during certification, on the Innovation Certification Form (under ‘Certification Checklist’)).