Information previously considered during examination does not provide an appropriate pretext for re-examination (unless it is part of a request by the patentee or a third party or, following quality review, re-examination is clearly warranted in light of such information). Therefore, the documents considered in re-examination will be those of the prior art base that the Commissioner considers necessary such as:

any published material that the Commissioner becomes aware of through Office staff;
any published material referred to by an opponent in a statement of opposition;
any material identified by a person requesting re-examination; or
any material as informed by a court directing re-examination.

In addition, examiners are to check if there are any FERs that were not available at the time of examination and consider whether these are relevant.

When determining the relevance of documents or other material, for example brochures, consideration should be given to whether the information is publicly available (see 2.4.4.3 Publicly Available).

Examiners should further note that account may be taken of material from the prior art base which consists of information made publicly available only through the doing of an act anywhere, whether in or out of the patent area. (See also ‘Consideration of Prior Use’ in 2.13.5.2A Balance of Probabilities, noting that the information under this sub-heading applies to all re-examinations).

Material may also be provided in the form of a declaration or as hearsay evidence and 3.5.1.1 Written Evidence and Declarations and 3.5.2 Admissibility of Evidence provide some guidance in this regard.

Where examiners are in doubt as to whether material meets the necessary prior art requirements they should consult Patent Oppositions.

Incorrect Translation of Documents

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

Where a document accompanying a re-examination request is not in English, the person making the request is required to provide a translation (see 2.22.4.2 Re-Examination Request).

In this situation, examiners should determine from the outset whether they have any doubts about the accuracy of the translation of a document. Examiners are not required to determine whether the document is a citation, but whether the translation appears to be incorrect (e.g. lack of continuity). If examiners consider that the translation is incorrect, they should first consult Patent Oppositions. If Patent Oppositions are in agreement, then the person who made the re-examination request should be asked 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 email Patent Oppositions (ohl@ipaustralia.gov.au) asking for a corrected translation and/or certificate of verification to be obtained from the person who made the re-examination request under the provisions of reg 22.15A. The email should clearly identify the relevant document(s). Patent Oppositions will issue a notification to the person and create a diary entry of the 2 month response date.

The re-examination process should in the meantime be placed on hold. Where no response is received in 2 months, re-examination should be carried out on the basis of the other documents identified in the re-examination request. Where the ‘incorrect’ translation is the only document, examiners should consult Patent Oppositions.