2.3 How our Practices and Procedures are Determined

Also in this Chapter:

• 2.1 Purpose of the Manual
• 2.2 Navigating the Manual 
• ​​​​​​​2.4 Updating the Manual

On this page

• Overview 
• Sources of change
• Development of Examination Practice and Procedure
• Effects of Appeals on Practice and Procedure

Overview

The key principles and practices that are set out in the manual have been developed over time and were created by taking into consideration the interpretation of Patents Act and Regulations by relevant authorities.

Our practice and procedures may be required to be updated based on changes in the legislation or based on rulings from the courts.  The section provides a broad understanding the types of material taken into consideration in the development of our practice and procedures to ensure effective administration of the patent system as well as providing consistency for our stakeholders.

Sources of change

The practices and procedures outlined in the manual are determined with regard to a variety of sources that directly impact the interpretation of Act and its application.

Sources that may have a direct impact of practice and procedure include:
​​​​​​​  

• Changes to the legislation
• Court decisions
• Decisions of the AAT

In addition to the above changes to practice and procedure may also arise from reviews of the patent system that are conducted by IP Australia in conjunction with industry bodies such as the Australian Law Reform Commission.

Development of Examination Practice and Procedure

Where changes in the application of patent law occur as a result of a decision rendered by the Courts or via a change in legalisation an internal review is conducted to determine what impacts such changes may have on office practice.

The review aims to determine what legal obligations may be imposed on the Office as a result of a Court decision or change in legalisation. Once these obligations are determined, a review of current practice is conducted in order to determine whether the current practice is in line with the relevant legal obligations.

Where it is determined that a change in practice is necessary, the Oppositions Hearings (OEP) and Quality and Examination sections, in consultation with the relevant Supervising Examiners, Assistant General Managers and General Managers, adjust the practice to best suit efficient administration of the Act as well as meeting the necessary legal obligations.  Where necessary, IP Australia may consult with other stakeholders e.g. Institute of Patent and Trademark Attorneys (IPTA) concerning any substantive changes to office practice.    

Any change in practice change is communicated to the relevant Office staff in accordance with IP Australia’s change management Framework.   

Effects of Appeals on Practice and Procedure

Appeals against decision of the Courts or the Commissioner can create some uncertainty regarding practice and procedure. Where appeals are pending, the above processes are normally followed to determine what changes if any need to be implemented while the appeal is pending. In such situations an interim practice may be established.  

While an appeal is pending, examiners should consult with their supervisor and OEP to ensure that the appropriate practice is adopted.