Quality

Quality Management at IP Australia

Quality Policy

1.1 International Searching

1.1.3 Search Allocation and Preliminary Classification

1.1.4 Unity of Invention

1.1.5 Abstract and Title

1.1.7.1 Claim Interpretation According to the PCT Guidelines

1.1.7.2 Broad Claims

1.1.8 Search Strategy

1.1.12 Search Report and Notification Form Completion

1.1.19 Annexes

1.2 International Type Searching

1.3 International Examination

1.3.4 Top-up Search

1.3.5 First IPE action

1.3.6 Response to Opinion

1.3.9 General Considerations

1.3.10 Annexes

Annex A Sub-Annexes

1.4 Fiji Applications

1.5 Thai Applications

1.6 WIPO Searches

2. National

2.1 General Approach to Examination

2.1.7 Citations

2.1.9.4 FERs and Report Formulation

Annex A - Open Patent Services (OPS) FER Process

2.2 Other Examination Considerations

2.2.8 Summary of IP Reform Changes

2.3 Definitions

2.4 Novelty

2.4.4 Relevant Prior Art

2.4.5 Construing the Citation

2.4.6 Level of Disclosure Required

2.4.12 Novelty - Some Specific Examples

2.4.12.1 Chemical Compounds

2.4.12.2 Range of Variables

2.4.12.2.1 Examples Needed for Clear and Unmistakable Directions

2.5 Inventive Step

2.5.1 Overview

2.5.2 Identifying the Relevant Facts

2.5.2.1 Common General Knowledge

2.5.3 Tests for Inventive Step

2.5.3.4 Special Inducements, Obvious Selections

2.5.3.4.1 Examples of Special Inducement

2.5.3.10 Indicators of Inventive Step

2.5.4 Inventive Step - Some Specific Examples

2.5.4.1 Chemical Situations

2.6 Applicants and Nominated Persons, Patent Requests, Entitlement

2.6.1 Applicants and Nominated Persons

2.6.2 Patent Requests

2.6.3 Entitlement

2.6.4 Changing the Applicant or Nominated Person

2.7 Micro-Organisms and Other Life Forms

2.7.3 The Budapest Treaty

2.7.4 The Deposit Requirements

2.7.4.3 Deposit Receipt and Notice of Entitlement to Rely on Deposit

2.7.4.3.1 Contents of the Receipt

2.7.5 Amendments to Insert Section 6(c) Information and Extensions of Time Therefor

2.7.6 Release of a Sample of Deposit

2.7.7 Deposit Requirements Cease to be Satisfied

Annexes

2.8 Abstracts

2.9 Patentability Issues

2.9.2.17 New Uses

2.9.2.18 Ethics and Social Policy

2.9.3 Other Issues

2.9.3.4.1A Assessing the Claims for Lack of Usefulness

2.9.3.5 Human Beings and Biological Processes for Their Generation

2.9.3.5.1 Stem Cells

2.9 Annex A - History of Manner of Manufacture

2.10 Divisional Applications (Sections 79B and 79C)

2.10.9.1 Supervision of Divisional Applications with Great Grandparent or Earlier Ancestors

2.11 Section 40 - Specifications

2.11.2.1 The Addressee

2.11.2.2 Rules of Construction

2.11.2.3 Construction of Claims

2.11.2.4 What is the Invention?

2.11.2.4A What is the Invention?

2.11.3 Full Description, Best Method

2.11.3A Clear Enough and Complete Enough Disclosure

2.11.7A Support for the Claims

2.11.7.1A Principles for Examination

2.11.7.1.1A Contribution to the Art

2.11.9.1 Consistency of Title in the Documents

2.12 Priority Dates and Filing Dates

2.12.1 Priority Dates

2.12.2 Filing Dates

2.13 Examination

2.13.5 Stringency of Tests During Examination

2.13.15.5 Opinion

Annexes

2.15.8 Postponement of Acceptance

2.18 Multiple Applications (Sections 64(2) and 101B)

2.19 Patents of Addition (Chapter 7)

2.19.1 Applications for Patents of Addition

2.19.2 Examination Procedure

2.20 National Phase Applications

2.20.1 Introduction

2.20.4 Complete Specification in a Foreign Language

2.20.5 Priority Considerations

2.20.10.1 Determining Whether Amendments Made Under Articles and Rules of the PCT are Considered During Examination

2.21 Convention Applications

2.21.3 Making Convention Applications

2.22 Re-Examination

2.22.4 Re-Examination Consideration

2.22.5 Re-Examination Report

2.22.6 Completion of Re-Examination Process

2.22.9 Revocation of Patent Following Re-examination

2.23 Amendments

2.23.3 Formalities

2.23.4 Fees

2.23.5 Granting Leave to Amend/Allowing the Amendments

2.23.8A Allowability Under Section 102(1)

2.23.9 Allowability Under Section 102(2) etc

2.23.10 "Clerical Error" and "Obvious Mistake"

2.23.11 Amendments After the Grant of a Patent

2.23.12 Other Allowability Issues Concerning Amendments to Complete Specifications

2.23.13 Amendment of a Patent Request or of Other Filed Documents

2.23.14 Amendments During Section 59 Opposition and Section 101M Opposition Proceedings

2.23.15 Opposition to Amendments

2.24 Requesting and Directing Examination, Withdrawal, Lapsing, Extension of Term

2.24.1 Requesting and Directing Examination

2.24.2 Withdrawal of Applications (Section 141, Regulation 13.1A)

2.24.2.2.1 Reversing Withdrawal of an Application

2.24.3 Lapsing of an Application

2.25 The Register of Patents (Chapter 19)

2.26 Employees, Delegations, Administration

2.26.1 Restrictions on Patent Office Staff (Sections 182-185)

2.26.4.1 Statutory Provisions

2.26.4.2 Types of Delegations Made by the Commissioner

2.26.5 Secret Cases

2.27 Payment of Fees (Section 227)

2.28 Transitional and Savings Provisions

2.29 Formalities and Forms

2.30 Patent Deed

2.30.1 Sealing of Duplicate Patent

2.31 Innovation Patents

2.31.1 Features of the System

2.31.2 Types of Innovation Patent Application

2.31.3 Formalities Check for Innovation Patents

2.31.4 Examination

2.31.4.5.4A Innovative Step

3. Oppositions, Disputes and Extensions

3.2.1 Section 59 - Opposition to Grant of a Standard Patent

3.2.2 Section 101M - Opposition to an Innovation Patent

3.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent

3.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document

3.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)

3.2.6 Reg 22.21(4) - Opposition to Grant of a Licence

3.2.7 Sections 17 & 32 - Disputes Between Applicants and Co-Owners

3.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A

3.3 Directions

3.3.1 Directions in Opposition Proceedings

3.3.2 Directions that an Application Proceed in Different Name(s) - Section 113

3.4 Opposition Documents - Requirements and Amendments

3.5 Evidence

3.5.1 Presentation of Evidence

3.5.3.1 Further Evidence

3.6 Production of Documents, Summonsing Witnesses

3.7 Withdrawal and Dismissal of an Opposition

3.7.1 Withdrawal of an Opposition

3.7.2 Dismissal of an Opposition

3.7.3 Withdrawal of an Opposed Application

3.8 Hearings and Decisions

3.8.1 Setting Down Hearings

3.8.2 Hearings Procedure

3.8.3 Ex Parte Hearings

3.8.4 Natural Justice and Bias

3.8.5 Principles of Conduct

3.8.6 Decisions

3.8.9 Quality

3.8.10 Appointment of Hearing Officers and Assistant Hearing Officers, Hearing Officer Standards Panel, Hearing Officer Delegations

3.9 Costs

3.10 The Register of Patents

3.10.3 Amendment of the Register

3.11 Extensions of Time and Restoration of the Right of Priority

3.11.1 Extensions of Time - Section 223

3.11.1.3 Subsection 223(2) - Error or Omission and Circumstances Beyond Control

3.11.1.4 Subsection 223(2A) - Despite Due Care

3.11.1.4.1 Filing a Request under Subsection 223(2A)

3.11.2 Extensions of Time - Reg 5.9

3.11.2.2.1 Application of Regulation 5.9

3.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)

3.11.4 Restoration of the Right of Priority under the PCT

3.12 Extension of Term of Standard Patents Relating to Pharmaceutical Substances

3.12.1 Section 70 Considerations

3.12.2 Applying for an Extension of Term

3.12.3 Processing an Application for an Extension of Term

3.12.3.3.1 Renewal Fees

3.12.3.4 Refusal of Application for Extension of Term

3.13 Documents not OPI - Orders for Inspection

3.14 Appeals, AAT and Judicial Review, Other Court Actions Involving the Commissioner, Section 105 Amendments

3.15 Computerised Decisions

4.1 Searching

4.1.4 Development of the Search Strategy

4.1.4.3 Search Area

4.1.4.3.3 Non-Patent Literature

4.1.5 Conducting the Search

2.5.1.5 Tests for Inventive Step

Date Published 20 Jan 2021

Unlike novelty, there are many tests applied by the courts to assess inventive step.

In Winner & Anor v Ammar Holdings Pty Ltd 25 IPR 273 at page 294, Cooper J stated:

"In order to ascertain whether or not the subject matter sought to be patented was beyond the skill of the calling, the courts have adopted a number of different approaches directed to the same end: for example, was the invention obvious or not?; does the invention solve an important problem "unsuccessfully attacked by previous inventions"? (Wood v. Gowshall (1937) 54 RPC 37 at 39)."

The following tests typify the basic approaches which the courts have used to establish obviousness:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286.

"was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end."

Allsop Inc & Another v Bintang Ltd & Ors 15 IPR 686 at page 701.

"Would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result]."

Olin Mathieson v Biorex (1970) RPC 157 at page 187, and approved by the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411.

"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."

Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 293.

"so easy that any fool could do it"

Edison Bell v Smith (1894) 11 RPC 389 at page 398.