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Date Published

Note: The information in this part only applies to:

•  innovation patents with an examination request filed on or after 15 April 2013.
•  innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other innovation patents, see Grounds of Examination.

The grounds of revocation of an innovation patent for invalidity are as follows:

  1. the patent does not comply with sec 40;
  2. the patent does not comply with sec 18(1A)(a) or sec 18(1A)(b) or sec 18(1A)(c);  
  3. the patent does not comply with sec 18(2) or sec 18(3);
  4. use of the invention is contrary to law;
  5. the invention is a food or medicine containing a mere admixture of known ingredients;
  6. the invention is a process producing a food or medicine through mere admixture of known ingredients;
  7. the patent contains a claim that includes the name of a person as the name or part of the name of an invention;
  8. the patent claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor where the relevant claims of each patent have the same priority date; and
  9. the patent does not comply with other matters prescribed in the Regulations.

Note:  Examiners are not to object to the lack of a notice of entitlement.  Entitlement is not a ground of examination (although it is ground of opposition) and there is no requirement for a notice to be filed.  (Statements regarding entitlement are included in the patent request).

The consideration of these grounds is substantially the same as the consideration of the corresponding grounds of examination for standard patent applications. It should be noted that the grounds of examination for standard patent applications which are equivalent to:

In considering the grounds of revocation, the Commissioner must be “satisfied, on the balance of probabilities” that the invention meets the necessary requirements (see 2.13.5 Stringency of Tests During Examination).

Private Applicant Cases

In the case of private applicants, examiners must include the following text at the end of any adverse examination report:

“You must pay annual renewal fees by when they are due or your patent will cease. Please note that you will not be notified by the Office of any due dates for the payment of fees. You will need to keep track of this yourself. For innovation patents, the first of these fees is usually due two years from the filing date, however depending on the circumstances of your application, another date may apply. Information about the fees that you will need to pay and when they will be due may be obtained by phoning 1300 651010.”

[See PERP code R71]

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