2.31.1.6 Certification

Date Published

Overview

Certification is the outcome of a favourable examination finding.  The major implication of certification is that the innovation patent becomes enforceable.  However, other important consequences arise from certification including:

  • the provisions of sec 102(2) apply to any sec 104 amendments requested after the decision to certify;

  • opposition and re-examination actions can now be initiated; and

  • the specification is published again, as a B4-level publication.

Note: Instructions for completing the innovation patent certification form are provided in 5.11.8 Certification.

Certification in Error – Revocation of Certification

Once an application has been formally certified, i.e. the Certification Task has been completed, that certification cannot be reversed other than in exceptional circumstances.

Where it becomes apparent after certification that the decision was affected by an error, similar considerations to those discussed in 2.15.5 Revocation of Acceptance apply.

If a certificate of examination of an innovation patent is issued on or after 15 April 2013, the certificate may be revoked under sec 101EA. This has the effect that the patent is taken never to have been certified and examination of the patent can continue.

The final date for certification is then governed by reg 9A.4(g) and will generally be the later of the date 6 months from the examiner’s first report and 3 months from the decision to revoke certification.

Furthermore, under reg 10.6B, any leave to amend that was granted at the time of the certification decision (i.e. the decision under sec 101E(1)(a)) and allowance of the amendment will also be revoked. Examination can then proceed as if certification and allowance of the amendments had not occurred.

The power to revoke certification under sec 101EA is only to be exercised by the Assistant General Manager (OEP) or the Supervising Examiner (Patent Oppositions). Certification can also only be revoked if there are no relevant proceedings pending.

If it becomes apparent that an error has occurred in certifying an innovation patent, the matter is to be referred to Patent Oppositions immediately.