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Date Published

In general, withdrawal of a patent application cannot be reversed. This is intended to promote public certainty around the status of patent rights and give effect to Article 4 C(4) of the Paris Convention which permits certain patent applications to be disregarded for the purpose of that Article only if, at the relevant time, the application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding. Given the serious consequences of withdrawal, the Act requires a notice of withdrawal to be signed by the applicant and, by extension, each applicant where there is more than one.

There are no statutory provisions allowing withdrawal to be reversed, however there are two circumstances where the Commissioner may consider a notice of withdrawal to have no effect:

  1. It is apparent on the face of the notice or on the basis of information available to the Commissioner that the person or persons who signed the request were not the applicants and did not have an express or implied authority from the applicants to make the request.

    An example of this is where a patent attorney files a notice, but it is subsequently found that the attorney only had the authority to act for one of a number of joint applicants.

  2. The notice of withdrawal results from a clerical error, that is, an error that arises in the mechanical process of writing or transcribing, or where a person misreads or misunderstands instructions and transcribes or writes the instruction as misread or misunderstood.

    Examples of this type of error include where the notice includes the wrong application number or where instructions to an attorney or clerical assistant are misunderstood as a request to withdraw the application.

A withdrawal cannot be reversed in other circumstances even if the decision to request withdrawal was based on an erroneous belief or error in judgement by the applicant or their attorney.

Where a notice of withdrawal is invalid on its face and should not have been processed by the Commissioner, withdrawal will be immediately reversed. In other cases, the Commissioner may not reverse the withdrawal if the applicant does not act promptly to notify the Office of the relevant circumstances. The Commissioner may alternatively require steps be taken to protect third party interests, for example, publication of a notice of the proposed reversal with the opportunity for third parties to be heard – see AMP Inc's Application (1978) AOJP 2335. This recognises the potential impact on third parties who may have acted on the basis of the withdrawal and that there are no 'protection and compensation provisions' similar to those provided by sec 223(9) and reg 22.21.

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