The reference to ‘other than a document which is in an approved form’ allows staff to assist applicants with filling out approved forms per se, although this does not extend to the patent specification itself.

Staff may be faced with requests to help prepare documents in both a work and private capacity. The following provides guidance on how to deal with such situations.

Work Capacity

Examination Staff

Examiners should consider what level of explanation or assistance is appropriate to provide in an examination report, without contravening sec 185(a). This issue is more likely to arise in the case of private applicants (see 2.2.2 “Private Applicant” Cases).

A situation which would not be regarded as ‘helping to prepare’ a patent specification is where examiners object to a claim and note that the objection would not apply if, for example, a particular phrase is used. This may be viewed as illustrating the nature of the problem, rather than advice to use the particular phrase. However, any suggestion that the particular phrase must be used may be inappropriate.

Examiners need to be particularly careful when dealing with private applicants, as typically they will be seeking guidance regarding what action to take. Accordingly, examiners should be careful when expressing alternative wordings and ensure that these are merely an indication of the reason for the objection, and not a suggestion for amendment to the specification.

When faced with a difficult examination issue, applicants may seek to discuss the objection with examiners and how it can be overcome. Records of any conversations should be placed on file (2.2.7.2 Communication with Applicants or Attorneys by Phone). When dealing with attorneys, it will usually be reasonable to assume that they have full responsibility for preparing the specification or other documents, and nothing that examiners might say in discussing a report will transfer any element of that responsibility. Accordingly, examiners may discuss objections with attorneys without impinging upon sec 185(a). However, in rare situations attorneys may seek to abrogate their responsibility for preparing the specification or other document, by directly or effectively asking examiners to write a claim or amendment for them. Such approaches must be rejected and the focus returned to the reason for the objection.

Non-Examination Staff

The considerations are the same as those arising under ‘Private Capacity’ (see below).

Private Capacity

Staff members can freely discuss with family and friends how the patent system works in general and pass on the type of information that is included in the various information kits available from IP Australia.

However, any discussion that arises in knowledge of an alleged invention will be problematic. In particular, staff members must avoid discussing:

how a person should draft their specification (in whole or in part) as it relates to their particular invention. (Note that hypothetical questions such as “Assuming my invention was (some well known article), how would you draft the specification?” do not avoid the prohibition under sec 185(a)).
whether a particular idea is patentable, including any assessment of whether it might be best filed as an application for a standard patent or an innovation patent, or whether it should be better filed as an application for a design.

In these circumstances, staff members should avoid any discussion about the particular invention. Discussion should be limited to the general requirements for a patent (noting, for example, the material available on the IP Australia website), suggestions that they read recent Australian patent specifications to see how specifications are drafted, suggestions that they should conduct a search of patent specifications to ascertain whether they have a new idea and informing them that there are various avenues of assistance available (e.g. patent attorneys, business planners, grant programs etc).

Employee is Inventor

The prohibition against preparing a patent specification does not apply to employees who are drafting the specification for their own invention. However, under no circumstances are employees to prepare documents relating to an application in respect of their own invention in Office time, or using Office equipment.

Particular difficulties may arise in the case of multiple inventors. The reference to ‘the inventor’ in sec 185(a) would appear to be a reference to all inventors. Thus, where one inventor is an employee, and the other is not, sec 185(a) precludes the employee inventor from preparing the specification and other documents on behalf of both inventors.

Where employees acquire an invention or patent by bequest or devolution of law (sec 182(3)), they will usually not be an inventor. Accordingly, employees are unable to prepare the specification or other documents.