b. in examination or re-examination, where there is a citation published after the priority date and before the filing date, or a whole of contents citation with a priority date after the priority date and before the filing date, of the case being examined;

c. in examination or re-examination, where there is a whole of contents citation having a priority date before the priority date of the case being examined; or

d. in opposition, when requested by the opponent.

During examination, if either of circumstances b. and c. arises and examiners have reason to believe that the claims are not entitled to the claimed priority date, they should check whether the relevant basic specification is available from Patentscope or another database, e.g. USPTO Public PAIR. If the document is present, a copy should be downloaded and added to the case file. Where the basic specification is not available, examiners should contact COG (via email to era@ipaustralia.gov.au) with a request to obtain the document from WIPO. COG will attempt to obtain the document either via the WIPO Digital Access Service (“DAS”) or directly from the International Bureau. If it emerges that the basic specification is not available within a reasonable time (about 3 weeks), examiners should issue a report with a request that the applicant provide a copy of the document certified according to reg 3.14D(1)(c) within 3 months (sec 43AA). It may also be necessary for examiners to request a translation at the same time as requesting the basic specification (see Translations of Basic Specifications below).

Note: The approval of a senior examiner must be obtained before issuing a request to the applicant to provide basic specifications.

If the applicant in response states that the basic specification is available via the WIPO DAS, examiners should again email COG with a request to retrieve the document. COG will verify that the Office was granted access to the document in the time allowed, inform examiners of this and retrieve the document. If the Office was not provided access in time, examiners should proceed on the basis that the time limit was not complied with. If access is provided, but for technical reasons the document cannot be retrieved from WIPO DAS, COG will direct the applicant to file or make the document available within a further period of 2 months (reg 3.14D). COG will then provide the document or advise that the time limit was not complied with. Failure of the applicant to comply with a request to provide basic specifications within the time limit will result in a loss of priority. If this situation arises, examiners should consult Patent Oppositions before taking any further action.

Translations of Basic Specifications

The Commissioner will only request an applicant to file translations* of basic specifications where there is a validity-related issue in which the determination of the correct priority date is, or is likely to be, important. Examples of such circumstances are given in b. to d. above. It is not expected that the Commissioner will require translations to be filed on the request of third parties.

Where a basic specification is on file, but COG have been unable to source an English translation thereof, examiners should assess the basic specification before requesting that the applicant provide a translation. Examiners should make use of qualified translators within the Office (see 1.10.5 Examiners with Foreign Language Capabilities), or a machine based translation (provided the basic specification is a published document), to initially assess whether a full translation is required. Similarly, an initial assessment of the figures (including chemical structures and amino acid/nucleotide sequences) can be used to determine whether a full translation is required.

If the basic specification is not available from an approved digital library, e.g. Patentscope, and is obviously in a foreign language (such as Japanese applications or EP applications by French or German companies), then both the basic specification and the translation* should simultaneously be requested from the applicant. For further information on translations, see 2.21.3.10 Translation Requirements.

*Note: For translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided.

Time Limits for Providing Basic Specifications

A request by the Commissioner for a copy of the basic specification and/or its translation* may in some circumstances extend the period for acceptance by up to 5 months. For further information on the procedures to be followed, see 2.15.7.4 Request for Basic Specification.

*Note: For translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided.

Certification of Basic Specifications

A certified copy of a basic specification is only required when requested by the Commissioner.

A certification "by the competent authority" (as required by reg 3.14D(1)(c)) means a certification by a person authorised in the relevant jurisdiction to issue such certifications (see definition of “competent authority” in reg 1.3(1)). For example, where an application claims Convention priority from an earlier International or European Regional application, a copy of the basic specification may be certified by a person authorised to issue such certificates in the International Bureau or EPO respectively.

Examiners should not question any certifications appearing either on official covering sheets (with or without official seals), or in any other form. However, where the certification itself introduces an element of doubt as to whether it would satisfy the necessary requirements, the matter is to be referred to a supervising examiner.

Examiners are not required to check basic specifications to see whether any pages are missing. Where examiners find that a page appears to be missing from a basic specification, they may assume, having regard to the accompanying certification by a responsible official, that the original specification filed in the Convention country was similarly deficient. Accordingly, no objection is to be taken that part of the basic specification is missing, and no objection is to be taken to the certification of the basic specification.