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- 1. International
- 1.1 International Searching
- 1.1.1 Procedural Outline - PCT International Search
- 1.1.2 Introduction
- 1.1.2.1 Introduction Background
- 1.1.2.2 Introduction International Examination
- 1.1.2.3 General Procedures
- 1.1.2.4 Extent of Search
- 1.1.2.5 Minimum Documentation
- 1.1.2.6 Examination Section Procedures
- 1.1.2.7 Searching Examiner
- 1.1.2.8 Other Considerations
- 1.1.2.9 Copending Applications
- 1.1.3 Search Allocation and Preliminary Classification
- 1.1.4 Unity of Invention
- 1.1.4.1 Unity of Invention Background
- 1.1.4.2 Determining Lack of Unity
- 1.1.4.3 Combinations of Different Categories of Claims
- 1.1.4.4 Markush Practice
- 1.1.4.5 Intermediate and Final Products in Chemical Applications
- 1.1.4.6 Biotechnological Inventions
- 1.1.4.7 Single General Inventive Concept
- 1.1.4.8 A Priori and A Posteriori Lack of Unity
- 1.1.4.9 Issuing the Invitation to Pay Additional Search Fees
- 1.1.4.10 Unsupported Unclear Long
- 1.1.4.11 Payment of Additional Search Fees Under Protest
- 1.1.4.12 Completing the Search Report
- 1.1.4.13 Time for Completing the Search Report
- 1.1.4.14 Reported Decisions
- 1.1.4.15 Other Decisions from the EPO
- 1.1.5 Abstract and Title
- 1.1.6 Subjects to be Excluded from the Search
- 1.1.7 Claim Interpretation, Broad Claims, PCT Article 5 and 6
- 1.1.7.1 Claim Interpretation According to the PCT Guidelines
- 1.1.7.1.1 PCT Guideline References and Flow Chart
- 1.1.7.1.2 Overview of the Hierarchy
- 1.1.7.1.3 Special Meaning, Ordinary Meaning, Everyday Meaning
- 1.1.7.1.4 Closed and Open Definitions and Implications for Interpretation
- 1.1.7.1.5 Implications of the Hierarchy on Searching
- 1.1.7.1.6 PCT GL Appendix Paragraphs 5.20[1] and 5.20[2]
- 1.1.7.1.7 Interpretation of Citations - Inherency
- 1.1.7.2 Broad Claims
- 1.1.7.3 PCT Articles 5 and 6
- 1.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims
- 1.1.7.5 Procedure for Informal Communication with the Applicant
- 1.1.8 Search Strategy
- 1.1.8.1 Introduction
- 1.1.8.2 The Three Person Team (3PT)
- 1.1.8.3 Area of Search
- 1.1.8.4 Search Considerations
- 1.1.9 Basis of the Search
- 1.1.10. Non-Patent Literature
- 1.1.11 Search Procedure
- 1.1.11.1 Overview - Novelty / Inventive Step
- 1.1.11.2 Inventive Step
- 1.1.11.3 Searching Product by Process Claims
- 1.1.11.4 Dates Searched
- 1.1.11.5 Conducting the Search
- 1.1.11.6 Useful Techniques ("piggy back/forward" searching)
- 1.1.11.7 Obtaining Full Copies
- 1.1.11.8 (reserved)
- 1.1.11.9 Considering and Culling the Documents
- 1.1.11.10 Ending the Search
- 1.1.11.11 Categorising the Citations
- 1.1.11.12 Grouping the Claims
- 1.1.12 Search Report and Notification Form Completion
- 1.1.12.1 Background Search Report and Notification Form Completion
- 1.1.12.2 Applicant Details
- 1.1.12.3 General Details
- 1.1.12.4 Fields Searched
- 1.1.12.5 Documents Considered to be Relevant
- 1.1.12.5.1 Selection of Documents Considered to be Relevant
- 1.1.12.5.2 Citation Category
- 1.1.12.5.3 Citation of Prior Art Documents
- 1.1.12.5.4 Citation of URLs
- 1.1.12.5.5 Citation Examples
- 1.1.12.5.6 Citing Patent Documents Retrieved from EPOQUE
- 1.1.12.5.7 Relevant Claim Numbers
- 1.1.12.6 Family Member Identification
- 1.1.12.7 Date of Actual Completion of the Search
- 1.1.12.8 Refund Due
- 1.1.12.9 Contents of Case File at Completion
- 1.1.13 Reissued, Amended or Corrected ISRs and ISOs
- 1.1.14 Priority Document
- 1.1.15 Foreign Patent Search Aids and Documentation
- 1.1.16 Assistance with Foreign Languages
- 1.1.17 Rule 91 Obvious Mistakes in Documents
- 1.1.18. Nucleotide and/or Amino Acid Sequence Listings
- 1.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings
- 1.1.18.2 Office Practice
- 1.1.18.3 Summary
- 1.1.19 Annexes
- Annex A - Blank ISR
- Annex B - Completed ISR
- Annex C - Completed ISR
- Annex D - Declaration of Non-Establishment of ISR
- Annex E - Completed Invitation to pay additional fees
- Annex F - Completed ISR with unity observations
- Annex H - Searching Broad Claims
- Annex I - Completed notification of change of abstract
- Annex J - Completed notification of decision concerning request for rectification
- Annex K - The role of the 3 Person Team in Searching
- Annex S - Refund of Search Fees
- Annex U - ISR Quality Checklist
- Annex V - Internet Searching
- Annex W - Obtaining full text from internet
- Annex Z - USPTO kind codes
- Annex AA - Markush Claims
- Annex BB - Article 5/6 Comparisons
- 1.2 International Type Searching
- 1.2.1 Procedural Outline International Type Search Report
- 1.2.2 Introduction - International Type Searching
- 1.2.3 Classification and Search Indication
- 1.2.4 Unity of Invention
- 1.2.5 Subjects to be Excluded from the Search
- 1.2.6 Obscurities, Inconsistencies or Contradictions
- 1.2.7 Abstract and Title
- 1.2.8 Search Report
- 1.2.9 Completing Search Report and Opinion Form
- 1.2.10 Annexes
- 1.3 International Examination
- 1.3.1 Procedural Outline Written Opinion
- 1.3.2 Introduction International Examination
- 1.3.3 The Demand and IPRPII
- 1.3.4 Top-up Search
- 1.3.5 First IPE action
- 1.3.5.1 First IPE Action
- 1.3.5.2 Supplementary International Search Report
- 1.3.5.3 PCT Third Party Observations
- 1.3.6 Response to Opinion
- 1.3.7 IPRPII and Notification
- 1.3.8 Completing ISO, IPEO and IPRPII Forms
- 1.3.8.1 Front Page and Notification Application Details
- 1.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs
- 1.3.8.3 Box II Priority
- 1.3.8.4 Box III Non-establishment of Opinion
- 1.3.8.5 Box IV Unity of Invention
- 1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability
- 1.3.8.7 Box VI Certain Documents Cited
- 1.3.8.8 Box VII Certain Defects
- 1.3.8.9 Box VIII Certain Observations
- 1.3.9 General Considerations
- 1.3.9.1 Article 19 or Article 34(2)(b) Amendments
- 1.3.9.2 Formalities
- 1.3.9.3 General Notes on Form Completion
- 1.3.9.4 Rule 91 Obvious Mistakes in Documents
- 1.3.9.5 Processing withdrawals of PCTs
- 1.3.10 Annexes
- Annex A Sub-Annexes
- Annex AA - Best Practice Example 1
- Annex AB - Best Practice Example 2
- Annex AC - Best Practice Example 3
- Annex AD - Best Practice Example 4
- Annex A - Written Opinion-ISA
- Annex B - Written Opinion-IPEO
- Annex C - Notification of Transmittal of IPERII
- Annex D - IPRPII
- Annex E - IPRPII Clear Novel and Inventive Box V Only
- Annex F - Invitation to Restrict/Pay Additional Fees - Unity
- Annex G - Extension of Time Limit
- Annex H - IPE Quality Checklist
- Annex I - Examples of Inventive Step Objections
- Annex J - Examples of Objections under PCT Articles 5 and 6
- Annex K - Example of PCT Third Party Observations
- Annex L - Blank Written Opinion - ISA
- Annex M - Blank Written Opinion - IPEO
- Annex N - Blank IPRPII
- Annex O - ISO/ISR with Omnibus Claims
- Annex P - PCT Timeline
- 1.4 Fiji Applications
- 1.4.1 Introduction
- 1.4.2 Completion Time and Priority
- 1.4.3 Initial Processing
- 1.4.4 Search Procedure
- 1.4.5 Search Report and Advisory Opinion
- 1.4.6 Further Advisory Opinion
- 1.4.7 Final Processing
- 1.4.8 Annexes
- 1.5 Thai Applications
- 1.5.1 Introduction Thai
- 1.5.2 Completion Time and Priority Thai
- 1.5.3 Initial Processing Thai
- 1.5.4 Search Procedure Thai
- 1.5.5 Search Report Thai
- 1.5.6 Final Processing Thai
- 1.5.7 Annex A - Thai Search Report
- 1.6 WIPO Searches
- 1.6.1 Introduction
- 1.6.2 Completion Time and Priority
- 1.6.3 Initial Processing
- 1.6.4 Search Procedure
- 1.6.5 Search Report
- 1.6.6 Final Processing
- 1.6.7 Annexes
- 1.7 Other Countries
- 1.8 (reserved)
- 1.9 PCT Articles, Regs and Guidelines et al
- 1.10 Miscellaneous
- 2. National
- 2.1 General Approach to Examination
- 2.1.1 Introduction
- 2.1.2 Searching and Use of IPRPI/IPRPIIs and Other Foreign Examination Reports
- 2.1.3 Flexible Approach for Complex Cases
- 2.1.4 Restriction of the Extent of the Report
- 2.1.4A Restriction of the Extent of the Report
- 2.1.5 Inconsistent or Piecemeal Examination
- 2.1.6 Examination and Report Requirements
- 2.1.7 Citations
- 2.1.7.1 Discussion of Citations
- 2.1.7.2 Identifying Citations
- 2.1.7.3 Assertion of Common General Knowledge and Mosaicing
- 2.1.7.4 Citing Many Citations
- 2.1.7.5 Non-Patent Literature
- 2.1.7.6 Providing Copies of Patent Documents
- 2.1.7.7 Unavailable or Untranslatable Citations
- 2.1.8 Furthers
- 2.1.9 Guidelines for Using IPRPI/IPRPIIs and Other Foreign Examination Reports (FERs) in Examination
- 2.1.9.1 Introduction
- 2.1.9.2 FER Retrieval
- 2.1.9.3 FER Validation
- 2.1.9.3.1 Claim Comparison
- 2.1.9.3.2 Not All Claims Previously Searched and/or Examined
- 2.1.9.3.2A Not All Claims Previously Searched and/or Examined
- 2.1.9.3.3 Validation of Novelty and Inventive Step Findings
- 2.1.9.3.4 Law and Practice Differences
- 2.1.9.3.4A Law and Practice Differences
- 2.1.9.3.5 Other Considerations Independent of FER Validity
- 2.1.9.4 FERs and Report Formulation
- 2.1.9.4.1 Objections Based on FER
- 2.1.9.4.2 Identifying Citations, Multiple Citations
- 2.1.9.4.3 New Citations at Further Report
- 2.1.9.5 FERs and Lack of Unity
- 2.1.9.6 FERs and Complex Cases
- Annex A - Open Patent Services (OPS) FER Process
- 2.2 Other Examination Considerations
- 2.2.1 Abbreviations Used in this Volume
- 2.2.2 "Private Applicant" Cases
- 2.2.3 Poor Translations
- 2.2.4 Communication of Report
- 2.2.4.1 Emailing Reports to Applicants or Attorneys, Sending Urgent Reports
- 2.2.4.2 Delayed or Non-Receipt of the Report by the Applicant or Attorney
- 2.2.4.3 Correction of Reports
- 2.2.5 Work Priorities and Case Allocation
- 2.2.6 Responsibility for Furthers, Voluntary Section 104 Amendments
- 2.2.7 Communication with Applicants and Attorneys Outside the Reporting Process and Recording of Case Notes
- 2.2.7.1 Introduction
- 2.2.7.2 Communication with Applicants or Attorneys by Phone
- 2.2.7.3 Communication with Applicants or Attorneys by Email
- 2.2.7.4 Dealing with Applicants or Attorneys in Person
- 2.2.7.5 Recording of Case Notes
- 2.2.8 Summary of IP Reform Changes
- 2.3 Definitions
- 2.3.1 Definitions in the Patents Act
- 2.3.2 Effect of the Acts Interpretation Act
- 2.3.3 Some Examples of Intended Ambits
- 2.3.4 Reckoning of Time
- 2.4 Novelty
- 2.4.1 Introduction
- 2.4.2 Test for Novelty
- 2.4.3 Applying the Test for Novelty
- 2.4.4 Relevant Prior Art
- 2.4.4.1 Prior Art Information
- 2.4.4.1A Prior Art Information
- 2.4.4.2 Meaning of Document
- 2.4.4.3 Publicly Available
- 2.4.4.4 Mosaics and Related Documents
- 2.4.4.5 Resiling from Acknowledged Prior Art
- 2.4.4.6 Exclusions
- 2.4.5 Construing the Citation
- 2.4.6 Level of Disclosure Required
- 2.4.6.1 Practical Utility
- 2.4.6.2 Non-Literal Disclosure
- 2.4.6.3 Clear and Unmistakable Directions
- 2.4.6.4 Mere Paper Anticipations
- 2.4.6.5 Enabling Disclosures
- 2.4.6.6 General Disclosures, Selections
- 2.4.7 All Features Disclosed in Citation
- 2.4.8 Not All Features of Claim Disclosed in Citation
- 2.4.8.1 Introduction
- 2.4.8.2 Features of a Claim prima facie Essential
- 2.4.8.3 Mere Presence in Claim Does Not Ensure Essential
- 2.4.8.4 Materially Affects the Way the Invention Works
- 2.4.8.5 Collocations Kits
- 2.4.8.6 Objects of the Invention, Statements of Prior Art
- 2.4.8.7 Words and Phrases
- 2.4.8.8 Conflicting Statements
- 2.4.8.9 Consideration of Independent and Dependent Claims
- 2.4.9 Doctrine of Mechanical Equivalents
- 2.4.10 All Essential Features Disclosed in Citation
- 2.4.11 "Whole of Contents"
- 2.4.11.1 Introduction
- 2.4.11.2 Basis of the Whole of Contents Objection
- 2.4.11.2A Basis of the "Whole of Contents" Objection
- 2.4.11.3 Priority Date Considerations
- 2.4.11.4 Publication Considerations
- 2.4.11.4A Publication Considerations
- 2.4.11.5 Citation Must be a Single Document
- 2.4.11.6 Citation an International Application under the PCT
- 2.4.11.7 Citation Not OPI
- 2.4.11.8 Citation a Secret Case
- 2.4.11.9 Citation cannot be a Provisional Specification
- 2.4.11.10 Level of Disclosure
- 2.4.12 Novelty - Some Specific Examples
- 2.4.12.1 Chemical Compounds
- 2.4.12.1.1 Construction - Implicit Degree of Purity
- 2.4.12.1.2 Essential Features of Compound Inventions
- 2.4.12.1.3 Enabling Disclosure
- 2.4.12.1.4 Generic Disclosures as Citations
- 2.4.12.1.5 Optical Isomers
- 2.4.12.1.6 Constitutional and Geometric Isomers
- 2.4.12.1.7 Tautomers
- 2.4.12.1.8 Derivatives
- 2.4.12.1.9 Purposive Construction of Compound Claims
- 2.4.12.1.10 Reach-Through Claims
- 2.4.12.2 Range of Variables
- 2.5 Inventive Step
- 2.5.1 Overview
- 2.5.1.1 Introduction
- 2.5.1.2 The Statutory Basis for Inventive Step
- 2.5.1.2A The Statutory Basis for Inventive Step
- 2.5.1.3 Precedent, and the Meaning of Obvious
- 2.5.1.4 Comparison between Novelty and Inventive Step
- 2.5.1.4.1 Prior Art Base
- 2.5.1.4.1A Prior Art Base
- 2.5.1.4.2 Operation of Section 7
- 2.5.1.4.2A Operation of Section 7
- 2.5.1.5 Tests for Inventive Step
- 2.5.1.6 Assessing Inventive Step in Examination
- 2.5.1.6A Assessing Inventive Step in Examination
- 2.5.1.7 Ex Post Facto Analysis
- 2.5.2 Identifying the Relevant Facts
- 2.5.2.1 Common General Knowledge
- 2.5.2.1.1 Introduction
- 2.5.2.1.1A Introduction
- 2.5.2.1.2 What is Common General Knowledge?
- 2.5.2.1.3 Evidence of Common General Knowledge
- 2.5.2.1.4 Acknowledged Prior Art
- 2.5.2.1.5 Common General Knowledge in Australia
- 2.5.2.1.5A Common General Knowledge not Limited to Being in Australia
- 2.5.2.1.6 Patent Specifications as Indicators of Common General Knowledge
- 2.5.2.1.7 Considerations at Further Reports
- 2.5.2.2 Non-Essential Features of the Invention Claimed
- 2.5.2.3 Determining the Problem
- 2.5.2.3.1 Introduction
- 2.5.2.3.1A Introduction
- 2.5.2.3.2 Problem Determined by Reference to Common General Knowledge and Prior Art Information
- 2.5.2.3.3 Claim Does Not Solve the Identified Problem
- 2.5.2.3.4 Amendment of the Problem
- 2.5.2.4 Identifying the Person Skilled in the Art (PSA)
- 2.5.2.4A Identifying the Person Skilled in the Art
- 2.5.2.5 Could the Person Skilled in the Art be Reasonably Expected to have Ascertained, Understood, Regard as Relevant and, Where Applicable, Combined the Prior Art Information?
- 2.5.2.5.1 Ascertained
- 2.5.2.5.2 Understood
- 2.5.2.5.3 Regarded as Relevant
- 2.5.2.5.3.1 Document Discusses the Same, or a Similar, Problem
- 2.5.2.5.3.2 Document Discusses a Different Problem
- 2.5.2.5.3.3 Age of the Document
- 2.5.2.5.3.4 Would the Person Skilled in the Art Have used the Document to Solve the Problem
- 2.5.2.5.4 Does the Document Constitute a Single Source of Information
- 2.5.2.5.5 Could the Person Skilled in the Art Consider it Obvious
- 2.5.2.5.5A Could the Person Skilled in the Art be Reasonably Expected to Have Combined the Prior Art Information to Solve the Problem?
- 2.5.2.5.6 Inventive Step Objections Involving a Combination of Documents
- 2.5.2.5A Prior Art Information
- 2.5.2.6 Evidentiary Requirements
- 2.5.3 Tests for Inventive Step
- 2.5.3.1 Introduction
- 2.5.3.2 Technical Equivalents
- 2.5.3.3 Workshop Improvements
- 2.5.3.3.1 Single Solution to the Problem
- 2.5.3.3.2 Bonus Effect
- 2.5.3.3.3 Several Solutions to the Problem
- 2.5.3.3.4 Selections
- 2.5.3.3.5 Obvious to Try
- 2.5.3.4 Special Inducements, Obvious Selections
- 2.5.3.5 Obvious Combinations of Features of Common General Knowledge
- 2.5.3.6 Invention in Identifying the Real Nature of the Problem
- 2.5.3.7 Invention in the Idea
- 2.5.3.8 Invention in the Purpose
- 2.5.3.9 Sub-Tests of Inventive Step
- 2.5.3.9.1 Prior Art, or Common General Knowledge, Teaches Away From the Solution
- 2.5.3.9.2 Practical Difficulties Overcome
- 2.5.3.9.3 Enabling Disclosures SubTests
- 2.5.3.10 Indicators of Inventive Step
- 2.5.4 Inventive Step - Some Specific Examples
- 2.6 Applicants and Nominated Persons, Patent Requests, Entitlement
- 2.6.1 Applicants and Nominated Persons
- 2.6.2 Patent Requests
- 2.6.2.1 The Request
- 2.6.2.2 Amendment of a Request
- 2.6.2.3 Name of the Applicant and Inventor
- 2.6.2.4 Address for Correspondence
- 2.6.2.5 Address for Service
- 2.6.2.6 Details of Related Applications
- 2.6.3 Entitlement
- 2.6.3.1 Notices of Entitlement
- 2.6.3.2 Identification of the Application
- 2.6.3.3 Who Can Make the Notice
- 2.6.3.4 Statements of Devolution
- 2.6.3.5 Section 15(1)(b) - Service Agreements
- 2.6.4 Changing the Applicant or Nominated Person
- 2.6.4.1 General Considerations
- 2.6.4.2 Section 113 Amendments (Assignment, Agreement or Operation of Law)
- 2.6.4.3 Section 104 Amendments
- Annex A - Examples of Legal Persons
- Annex B - Examples of Organisations of Uncertain Status as Legal Persons
- 2.7 Micro-Organisms and Other Life Forms
- 2.7.1 General Considerations and Definitions
- 2.7.2 Full Written Description of a Life Form
- 2.7.2.1 General Requirements of the Description
- 2.7.2.1A General Requirements of the Description
- 2.7.2.2 Some Specific Requirements for the Written Description of Plant Varieties
- 2.7.2.3 Best Method of Performance of an Invention Involving a Life Form
- 2.7.2.4 The Issue of Repeatability
- 2.7.3 The Budapest Treaty
- 2.7.3.1 Introduction
- 2.7.3.1A Introduction
- 2.7.3.2 Full Description of a Micro-Organism by Satisfying the Deposit Requirements
- 2.7.3.2A Enabling Disclosure of a Micro-Organism by Satisfying the Deposit Requirements
- 2.7.3.3 Inventions Involving the Use
- 2.7.3.4 Deposit Requirements in Modified Examination
- 2.7.3.5 Deposit Requirements Affecting the Priority Date of a Divisional Application
- 2.7.4 The Deposit Requirements
- 2.7.4.1 Types of Deposits Under the Budapest Treaty
- 2.7.4.2 Deposit Requirements Under Section 6
- 2.7.4.3 Deposit Receipt and Notice of Entitlement to Rely on Deposit
- 2.7.5 Amendments to Insert Section 6(c) Information and Extensions of Time Therefor
- 2.7.5.1 Sections 104 and 223 - Insertion of Section 6(c) Information
- 2.7.5.1A Sections 104 and 223 - Insertion of Section 6(c) Information
- 2.7.5.2 Article 34 Amendments Concerning Section 6(c) Information
- 2.7.5.3 Amendment Procedure When a Request for Certification for Release is Pending
- 2.7.5.4 Amendment Procedure When Deposit Requirements Cease to be Satisfied
- 2.7.6 Release of a Sample of Deposit
- 2.7.6.1 Request for Release
- 2.7.6.2 Consideration of Request for Release
- 2.7.6.3 Grant of Certification Authorising Release
- 2.7.6.4 Restrictive Access Provision
- 2.7.7 Deposit Requirements Cease to be Satisfied
- Annexes
- 2.8 Abstracts
- 2.9 Patentability Issues
- 2.9.1 Overview
- 2.9.2 Patentable Subject Matter (Manner of Manufacture)
- 2.9.2.1 Legal Principles
- 2.9.2.2 Reserved
- 2.9.2.3 Alleged Invention
- 2.9.2.4 Fine Arts
- 2.9.2.5 Discoveries, Ideas, Scientific Theories, Schemes and Plans
- 2.9.2.6 Nucleic Acids and Genetic Information
- 2.9.2.7 Computer Implemented Inventions - Schemes and Business Methods
- 2.9.2.8 Printed Matter
- 2.9.2.9 Games and Gaming Machines
- 2.9.2.10 Mathematical Algorithms
- 2.9.2.11 Methods of Testing, Observation and Measurement
- 2.9.2.12 Mere Working Directions
- 2.9.2.13 Treatment of Human Beings
- 2.9.2.14 Micro-Organisms and Other Life Forms
- 2.9.2.15 Agriculture and Horticulture
- 2.9.2.16 Combinations, Collocations, Kits, Packages and Mere Admixtures
- 2.9.2.16.1 Collocations
- 2.9.2.16.2 Kits and Packages
- 2.9.2.16.3 Admixtures
- 2.9.2.16.4 Tips on Claim Construction
- 2.9.2.17 New Uses
- 2.9.2.17.1 New Use of a Known Substance
- 2.9.2.17.2 New Use of an Old Contrivance
- 2.9.2.17.3 Analogous Use
- 2.9.2.18 Ethics and Social Policy
- 2.9.3 Other Issues
- 2.9.3.1 Contrary to Law
- 2.9.3.2 Food or Medicines, Being Mere Admixtures
- 2.9.3.3 General Inconvenience
- 2.9.3.4 Useful (Utility)
- 2.9.3.4A Useful (Utility)
- 2.9.3.4.1A Assessing the Claims for Lack of Usefulness
- 2.9.3.4.1.1A Does the Invention Achieve the Promised Benefit?
- 2.9.3.4.1.2A Specific, Substantial and Credible Use
- 2.9.3.4.2A Consideration of Specific Claim Types
- 2.9.3.4.3A Therapeutic or Pharmacological Use
- 2.9.3.4.4A Contravention of Laws of Nature
- 2.9.3.5 Human Beings and Biological Processes for Their Generation
- 2.9 Annex A - History of Manner of Manufacture
- 2.10 Divisional Applications (Sections 79B and 79C)
- 2.10.1 Application
- 2.10.1A Application
- 2.10.2 Priority Entitlement
- 2.10.2A Priority Entitlement
- 2.10.3 Time Limits for Filing Applications
- 2.10.3A Time Limits for Filing Applications
- 2.10.4 Status of Parent
- 2.10.5 Subject Matter
- 2.10.5A Subject Matter
- 2.10.6 Acceptance
- 2.10.7 Continuation Fees
- 2.10.8 Dividing From a Provisional Application
- 2.10.9 Considering Relative Cases During Examination
- 2.10.10 Amendment of Patent Request - Conversion of Application to a Divisional
- 2.10.10A Amendment of Patent Request - Conversion of Application to a Divisional
- Annex A - Procedural Outline to Divisional Application Examination
- 2.11 Section 40 - Specifications
- 2.11.1 Overview
- 2.11.1A Overview
- 2.11.2 Construction of Specifications
- 2.11.2.1 The Addressee
- 2.11.2.2 Rules of Construction
- 2.11.2.2.1 Construction of Patent Specifications a Question of Law
- 2.11.2.2.2 Words are Given their Plain Meaning
- 2.11.2.2.3 Read the Specification as a Whole
- 2.11.2.2.3A Read the Specification as a Whole
- 2.11.2.2.4 Purposive Construction
- 2.11.2.2.5 Dictionary Principle
- 2.11.2.2.6 Reject the Absurd
- 2.11.2.2.7 The Description Construed as a Technical Document
- 2.11.2.2.8 Errors, Mistakes, Omissions
- 2.11.2.3 Construction of Claims
- 2.11.2.3.1 The Claims are Construed as a Legal Document
- 2.11.2.3.2 A Presumption is Made Against Redundancy
- 2.11.2.3.3 "For Use", "When Used", etc
- 2.11.2.3.3A "For Use", "When Used", etc
- 2.11.2.3.4 "Comprises", "Includes", "Consists of" and "Contains"
- 2.11.2.3.5 Reference Numerals in Claims
- 2.11.2.3.6 Appendancies
- 2.11.2.3.7 Relative Terms
- 2.11.2.3.8 "Substantially" and "About"
- 2.11.2.3.9 Omnibus Claims
- 2.11.2.3.9A Omnibus Claims
- 2.11.2.3.10 Swiss Claims
- 2.11.2.3.11 Product by Process Claims
- 2.11.2.3.12 Parametric Claims
- 2.11.2.4 What is the Invention?
- 2.11.2.4.1 General Considerations
- 2.11.2.4.2 Approach in Lockwood v Doric
- 2.11.2.4.3 Consistory Clause
- 2.11.2.4.3A Consistory Clause
- 2.11.2.4.4 Requirement for Critical Analysis
- 2.11.2.4.5 "Essential Features" of the Invention
- 2.11.2.4A What is the Invention?
- 2.11.3 Full Description, Best Method
- 2.11.3.1 Date for Determining Full Description
- 2.11.3.2 Can the Nature of the Invention be Ascertained?
- 2.11.3.3 Compliance with Subsection 40(2) is a Question of Fact
- 2.11.3.4 Enabling Disclosures
- 2.11.3.5 Effort Required to Perform the Invention
- 2.11.3.6 Different Aspects Claimed in Different Claims
- 2.11.3.7 Inclusion of References
- 2.11.3.8 Trade Marks in Specifications
- 2.11.3.9 Colour Drawings and Photographs
- 2.11.3.10 Claims as Basis of Disclosure
- 2.11.3.11 Contravention of Laws of Nature - e.g. Perpetual Motion Machines
- 2.11.3.12 Relative Terms
- 2.11.3.13 Starting Materials
- 2.11.3.14 Cyclic Inventions
- 2.11.3.15 Biological Inventions and the Budapest Treaty
- 2.11.3.16 Distinction Between Lack of Full Description, Inutility and False Suggestion
- 2.11.3.17 Best Method of Performing the Invention
- 2.11.3.18 At Least One Method Must be Disclosed
- 2.11.3.19 Only One Preferred Embodiment is Required
- 2.11.3A Clear Enough and Complete Enough Disclosure
- 2.11.3.1A Date for Determining Clear Enough and Complete Enough Disclosure
- 2.11.3.3A Compliance with Subsection 40(2) is a Question of Fact
- 2.11.3.4A Principles for Examination
- 2.11.3.4.1A Clarity of Disclosure
- 2.11.3.4.2A Section 40 Enabling Disclosures
- 2.11.3.4.3A Undue Burden
- 2.11.3.7A Inclusion of References
- 2.11.3.8A Trade Marks in Specifications
- 2.11.3.9A Colour Drawings, Graphics and Photographs
- 2.11.3.10A Claims as Basis of Disclosure
- 2.11.3.11A Contravention of Laws of Nature - e.g. Perpetual Motion Machines
- 2.11.3.12A Relative Terms
- 2.11.3.14A Cyclic Inventions
- 2.11.3.15A Biological Inventions and the Budapest Treaty
- 2.11.3.17A Best Method of Performing the Invention
- 2.11.3.18A At Least One Method Must be Disclosed
- 2.11.3.19A Only One Preferred Embodiment is Required
- 2.11.4 Claims Define the Invention
- 2.11.4A Claims Define the Invention
- 2.11.5 Claims are Clear
- 2.11.5.1 Length of Claim
- 2.11.5.2 One Sentence
- 2.11.5.3 Redundant Claims
- 2.11.5.4 Different Combinations of Integers
- 2.11.5.5 Dictionary Definitions
- 2.11.5.6 Cross-References
- 2.11.5.6A Cross-References
- 2.11.5.7 Trade marks in claims
- 2.11.5.7A Trade Marks in Claims
- 2.11.5.8 Disclaimers
- 2.11.5.9 Imprecise Terms - e.g. "About"
- 2.11.5.10 Appendancy Issues
- 2.11.6 Claims are Succinct
- 2.11.7 Claims are Fairly Based
- 2.11.7.1 General Principles
- 2.11.7.2 Sub-Tests for Fair Basis
- 2.11.7.3 Relationship Between the Invention Described and the Invention Claimed
- 2.11.7.4 Only Disclosure is in a Claim
- 2.11.7.5 Alternatives in a Claim
- 2.11.7.6 Claiming by Result
- 2.11.7.7 Reach-Through Claims
- 2.11.7.8 Claims to Alloys
- 2.11.7A Support for the Claims
- 2.11.7.1A Principles for Examination
- 2.11.7.2A Subsection 40(2)(a) 'Clear and Complete Disclosure' v Subsection 40(3) 'Support'
- 2.11.7.3A Inconsistency Between the Invention Disclosed and the Invention Claimed
- 2.11.7.4A Support in View of Proposed Amendments
- 2.11.7.5A Alternatives in a Claim
- 2.11.7.6A Claiming by Result
- 2.11.7.7A Reach-Through Claims
- 2.11.7.8A Claims to Alloys
- 2.11.7.9A Broad or Speculative Claims
- 2.11.7.10A Support Required for Pharmaceutical Inventions and Methods of Treatment
- 2.11.8 Claims Relate to One Invention Only - Lack of Unity
- 2.11.9 Title of the Specification
- 2.11.10 Provisional Specifications
- 2.11.10A Provisional Specifications
- 2.11.11 Complete Applications Associated with Provisional Applications
- 2.11.11A Complete Applications Associated with Provisional Applications
- 2.11.12 Complete Application Treated as a Provisional
- 2.11A Annex A - Examples: Subsections 40(2)(a) and 40(3)
- 2.11A Annex B - Summary of the Clear Enough and Complete Enough Disclosure, Support and Useful (Utility) Provisions
- 2.12 Priority Dates and Filing Dates
- 2.12.1 Priority Dates
- 2.12.1.1 Priority Date of Claims
- 2.12.1.1A Priority Date of Claims
- 2.12.1.2 Priority Date Issues Specific to Associated Applications
- 2.12.1.2A Priority Date Issues Specific to Associated Applications
- 2.12.1.3 Priority Date Issues Specific to Convention Applications
- 2.12.1.3A Priority Date Issues Specific to Convention Applications
- 2.12.1.4 Priority Date Issues Relating to Amended Claims
- 2.12.1.4A Priority Date Issues Relating to Amended Claims
- 2.12.2 Filing Dates
- 2.13 Examination
- 2.13.1 Initial Considerations
- 2.13.2 Applications in a State of Lapse, or Lapsed
- 2.13.2.1 Forms of Lapsing
- 2.13.2.2 Lapsing Prior to Issuing First Report
- 2.13.2.3 Lapsing at Further Report
- 2.13.3 Pending Section 223 Actions
- 2.13.4 Request for Examination
- 2.13.4.1 Request Procedures
- 2.13.4.2 Order of Examination
- 2.13.4.3 Expedited Examination
- 2.13.4.4 Expedited Examination Under the Global Patent Prosecution Highway
- 2.13.4.5 Expedited Examination Under the IP Australia-European Patent Office Patent Prosecution Highway
- 2.13.5 Stringency of Tests During Examination
- 2.13.5.1 Introduction
- 2.13.5.1A Introduction
- 2.13.5.2 Balance of Probabilities
- 2.13.5.2A Balance of Probabilities
- 2.13.5.3 Benefit of Doubt
- 2.13.6 Matters of Form
- 2.13.7 Amendments
- 2.13.7.1 Amendments in Anticipation
- 2.13.7.2 Notice of Incoming Amendments
- 2.13.7.3 Amendments in Partial Response to a Report
- 2.13.7.4 Suggesting Amendments
- 2.13.7.5 Late Filing of Amendments and Responses
- 2.13.8 Review of Classification
- 2.13.9 Searching
- 2.13.10 (reserved)
- 2.13.11 Notices Under Section 27
- 2.13.12 Other Prescribed Matters
- 2.13.13 Examining Cases Subject to a Prohibition Order
- 2.13.13.1 Statutory Basis
- 2.13.13.2 Initial Handling
- 2.13.13.3 Allocation and Handling of Cases
- 2.13.13.4 Searching Prohibited Cases
- 2.13.13.5 Recording Search/Classification Details
- 2.13.14 Copying of Material and Copyright Implications
- 2.13.15 Preliminary Search and Opinion (PSO)
- 2.13.15.1 Introduction
- 2.13.15.2 Applicant Requested PSO
- 2.13.15.3 Amendments
- 2.13.15.4 Search Procedure
- 2.13.15.5 Opinion
- 2.13.15.6 PSO Form Completion
- 2.13.15.7 Response to PSO
- Annexes
- 2.14 Modified Examination
- 2.15 Acceptance of Standard Patent Applications
- 2.15.1 Introduction
- 2.15.2 Misleading Unfair or Derogatory References
- 2.15.3 Processes Operated Outside the Jurisdiction of Australian Law
- 2.15.4 Clear Reports
- 2.15.5 Revocation of Acceptance
- 2.15.6 Time for Acceptance
- 2.15.7 Exending the Time for Acceptance
- 2.15.7.1 Objections Based on "Whole of Contents"
- 2.15.7.2 Objections Based on a Section 27 Notice
- 2.15.7.3 Request for Corrected Translation or Certificate of Verification
- 2.15.7.4 Request for Basic Specification
- 2.15.7.5 Entitlement Disputes During Examination
- 2.15.7.6 Action by a Court or Tribunal
- 2.15.8 Postponement of Acceptance
- 2.15.9 Acceptance and QRS Issues
- 2.16 Petty Patents
- 2.17 Publications
- 2.17.1 Significance of Publication
- 2.17.2 Date of Publication
- 2.17.3 OPI Notified by Error
- 2.17.4 Obtaining OPI Date
- 2.17.5 Published Documents
- 2.17.6 Publication Date of PCT and Foreign Specifications for Citation Purposes
- 2.18 Multiple Applications (Sections 64(2) and 101B)
- 2.18.1 Introduction
- 2.18.2 Practice
- 2.18.3 Examination Reports
- 2.18.4 Requirement that Inventors be the Same
- 2.18.5 Inventions Claimed in a Claim
- 2.18.6 Same Invention
- 2.18.7 Priority Dates
- 2.18.8 Additionals/Divisionals
- 2.18.9 Omnibus Claims
- Annex A - Bar-to-Grant Letter
- 2.19 Patents of Addition (Chapter 7)
- 2.19.1 Applications for Patents of Addition
- 2.19.1.1 Introduction
- 2.19.1.2 Neither Can be an Innovation Patent
- 2.19.1.3 Conditions of Filing
- 2.19.1.4 Patent Must be in Force
- 2.19.1.5 Fees
- 2.19.1.6 Authorisation From Parent Application
- 2.19.1.7 Main Invention Ownership Change
- 2.19.1.8 One Parent Only
- 2.19.1.9 Plural Additional Applications
- 2.19.1.10 Additional to an Additional
- 2.19.1.11 May be Both an Additional and Divisional
- 2.19.2 Examination Procedure
- 2.19.3 Improvement and Modification
- 2.19.4 Amendments Add
- 2.19.5 Timing Provisions
- 2.19.6 Differentiation From the Parent
- 2.19.7 Considering Parent File During Examination
- Annex A - Procedural Outline to Patents of Addition Examination
- 2.20 National Phase Applications
- 2.20.1 Introduction
- 2.20.1.1 Definitions of Terms
- 2.20.1.2 Key Features of the Legislation
- 2.20.1.2A Key Features of the Legislation
- 2.20.1.3 National Phase Preliminaries
- 2.20.1.3A National Phase Preliminaries
- 2.20.1.4 Formality Requirements
- 2.20.1.4A Formalities Check
- 2.20.2 Classification
- 2.20.3 Patent Request and Entitlement
- 2.20.4 Complete Specification in a Foreign Language
- 2.20.4.1 General Considerations
- 2.20.4.2 Translation Supplied by the Applicant
- 2.20.4.3 Translation Supplied by the International Bureau
- 2.20.5 Priority Considerations
- 2.20.5.1 Priority Sources
- 2.20.5.1A Priority Sources
- 2.20.5.2 Obtaining and Considering Priority Documents
- 2.20.6 National Examination Where the ISR is Available
- 2.20.7 National Examination Where the ISR is Missing
- 2.20.8 Use of IPRP
- 2.20.9 According International Filing Dates and Article 25 Applications
- 2.20.10 Amendments and Corrections Prior to Examination
- 2.20.10.1 Determining Whether Amendments Made Under Articles and Rules of the PCT are Considered During Examination
- 2.20.10.1.1 General Provisions
- 2.20.10.1.1A General Provisions
- 2.20.10.1.2 Determining Whether Article 19 and Article 34 Amendments are Considered During Examination
- 2.20.10.1.2A Determining Whether Article 19 and Article 34 Amendments are Considered During Examination
- 2.20.10.1.3 The IASR
- 2.20.10.1.4 The IASF
- 2.20.10.2 Formality Considerations
- 2.20.10.3 Article 19 Amendments
- 2.20.10.4 Article 34 Amendments
- 2.20.10.5 Translation of Amendments
- 2.20.10.6 Amendments Resulting in a Claim to New Matter
- 2.20.10.7 Rule 91 Amendments
- 2.20.10.8 Rule 92bis Amendments
- 2.20.10.9 Corrected Versions of Pamphlet and IPRPII
- 2.20.11 Amendments During Examination
- 2.20.11A Amendments During Examination
- 2.20.12 Chapter 15 Applications (Sections 147 to 153)
- Annexes
- Annex A - Examination of National Phase Applications: Indicators of Special or Different Considerations
- Annex B - Applicant and Inventor Details as Shown on PCT Pamphlet Front Page
- Annex C - Declaration Under Rule 4.17
- Annex D - Verification of Translation
- Annex E - PCT Pamphlet Front Page
- Annex F - Amended Claims Format
- 2.21 Convention Applications
- 2.21.1 Introduction
- 2.21.2 Convention Countries
- 2.21.2.1 Convention Country Listing
- 2.21.2.1A Convention Country Listing
- 2.21.2.2 Basic Applications Filed Before Intergovernmental Organisations
- 2.21.2.3 Convention Country Status Change
- 2.21.2.3A Convention Country Status Change
- 2.21.3 Making Convention Applications
- 2.21.3.1 General Requirements
- 2.21.3.2 Who May Apply
- 2.21.3.3 Basic Applications
- 2.21.3.4 Timing Provisions Convention
- 2.21.3.5 Basic Application Outside 12 Month Convention Period
- 2.21.3.5A Basic Application Outside 12 Month Convention Period
- 2.21.3.6 Basic Applications Having a Parent Application
- 2.21.3.7 Patent Requests and Entitlement
- 2.21.3.8 Basic Specifications
- 2.21.3.9 Converting Convention Applications to Non-Convention, and Vice Versa
- 2.21.3.10 Translation Requirements
- 2.21.3.11 Date of Basic Application
- 2.21.3.12 Convention Priority Dates
- 2.21.3.12A Convention Priority Dates
- 2.22 Re-Examination
- 2.22.1 Introduction
- 2.22.2 Transitional Provisions
- 2.22.3 When Re-Examination Applies
- 2.22.3.1 Between Acceptance and Grant (Applications for Standard Patents)
- 2.22.3.2 Post-Grant (Standard and Innovation Patents)
- 2.22.3.3 Re-examination of Standard Applications and Innovation Patents
- 2.22.4 Re-Examination Consideration
- 2.22.4.1 Scope of the Consideration
- 2.22.4.2 Re-Examination Request
- 2.22.4.3 Material Considered During Re-Examination
- 2.22.4.4 Re-Examination in Light of the Traditional Knowledge Digital Library (TKDL)
- 2.22.5 Re-Examination Report
- 2.22.5.1 Initial Report
- 2.22.5.2 Statement under Section 99 or Section 101H
- 2.22.5.3 Copy of the Statement under Section 99 or Section 101H
- 2.22.5.4 Subsequent Adverse Reports
- 2.22.5.5 Proposed Amendments are Allowable
- 2.22.5.6 Proposed Amendments are not Allowable
- 2.22.5.7 Supervision of Reports
- 2.22.6 Completion of Re-Examination Process
- 2.22.6.1 Completion of Re-Examination in an Opposition Proceeding
- 2.22.6.2 Conclusion of Re-Examination Otherwise
- 2.22.7 Copy of Report on Re-Examination
- 2.22.8 Refusal to Grant a Patent Following Re-examination
- 2.22.9 Revocation of Patent Following Re-examination
- 2.22.9.1 Decision by the Commissioner
- 2.22.9.2 Where Proceedings are Pending
- 2.22.9.3 Appeal by the Patentee
- 2.22.9.4 Appeal by a Third Party
- Annex A - Re-examination Processing
- Annex B - Intention to Re-Examine Letter
- Annex C - Re-Examination Checklist
- 2.23 Amendments
- 2.23.1 Introduction
- 2.23.2 General Provisions - Section 104 Amendments
- 2.23.2.1 Who May Request Amendment
- 2.23.2.2 When Amendment May Be Requested
- 2.23.2.3 What Documents Can Be Amended
- 2.23.2.4 Withdrawal of Amendment Request
- 2.23.2.5 Multiple Requests for Amendment
- 2.23.2.6 National Phase Applications
- 2.23.2.7 Priority in Reporting on Voluntary Requests to Amend
- 2.23.2.8 Unfinalised Proposed Amendments Prior to Examination
- 2.23.3 Formalities
- 2.23.3.1 Form of Request to Amend
- 2.23.3.2 The Document to be Amended
- 2.23.3.3 When Amendments are OPI
- 2.23.3.4 Amendments Arising Out of Decisions or Directions Under Appeal
- 2.23.3.5 Relevant Proceedings Pending
- 2.23.3.6 Consent of Exclusive Licensee or Mortgagee Required
- 2.23.3.7 Requirements in Relation to Providing Reasons for Proposed Amendments
- 2.23.3.8 Form Amendments Should Take
- 2.23.3.9 Amending a Complete Specification Under Section 104 to Comply with a Regulation 3.2A Direction
- 2.23.3.10 Incorporating Amendments into the Specification
- 2.23.3.11 Amendments to Amino Acid and/or Nucleotide Sequences in Electronic Form
- 2.23.4 Fees
- 2.23.4.1 Fees Required for Amendment Requests
- 2.23.4.2 Request to Amend Where Patent/Application is not in Force
- 2.23.5 Granting Leave to Amend/Allowing the Amendments
- 2.23.5.1 Granting Leave to Amend
- 2.23.5.2 Publishing a Notice of the Granting of Leave to Amend
- 2.23.5.3 Allowing Amendments After Granting Leave
- 2.23.5.4 Allowing Amendments Upon Acceptance of a Patent Request and Complete
- 2.23.5.5 Allowing Amendments Immediately Prior to OPI
- 2.23.5.6 Revocation of Leave to Amend
- 2.23.6 Amendments to Complete Specifications
- 2.23.7 Allowability of Amendments to Complete Specifications
- 2.23.7A Allowability of Amendments to Complete Specifications
- 2.23.8 Allowability under Section 102(1)
- 2.23.8A Allowability Under Section 102(1)
- 2.23.9 Allowability Under Section 102(2) etc
- 2.23.9.1 General Comments
- 2.23.9.1A General Comments
- 2.23.9.2 Meaning of fall within the scope of the claims
- 2.23.9.3 Allowability Under Section 102(2)(a)
- 2.23.9.4 Broadening the Scope of the Claims
- 2.23.9.5 Allowability and Omnibus Claims
- 2.23.9.5A Allowability and Omnibus Claims
- 2.23.9.6 Allowability Under Section 102(2)(b)
- 2.23.10 "Clerical Error" and "Obvious Mistake"
- 2.23.10.1 General Comments
- 2.23.10.2 Clerical Error
- 2.23.10.3 Obvious Mistake
- 2.23.10.4 Evidence Required to Prove a Clerical Error or Obvious Mistake
- 2.23.11 Amendments After the Grant of a Patent
- 2.23.12 Other Allowability Issues Concerning Amendments to Complete Specifications
- 2.23.12.1 Amendments Relating to Micro-Organisms
- 2.23.12.2 Amendments Otherwise not Allowable to a Complete Specification
- 2.23.13 Amendment of a Patent Request or of Other Filed Documents
- 2.23.13.1 Amendment of Patent Request
- 2.23.13.2 Amending a Standard Patent Request to an Innovation Patent
- 2.23.13.3 Amending a Non-Convention Patent Request to a Convention Patent Request
- 2.23.13.4 Amending a Convention Patent Request to a Non-Convention Patent Request
- 2.23.13.5 Amending Convention Particulars on a Patent Request
- 2.23.13.6 Adding a Second or Subsequent Basic Application to a Convention
- 2.23.13.7 Amending a Patent Request to a Patent Request for a Patent of Addition
- 2.23.13.8 Amendments to a Provisional Specification
- 2.23.13.8A Amendments to a Provisional Specification
- 2.23.13.9 Amending a Request for Examination
- 2.23.13.10 Amendments to "other filed documents"
- 2.23.14 Amendments During Section 59 Opposition and Section 101M Opposition Proceedings
- 2.23.14.1 General Comments
- 2.23.14.2 Issuing the Invitation
- 2.23.14.3 (reserved)
- 2.23.14.4 Considering the Amendments
- 2.23.14.4.1 Task Priority
- 2.23.14.4.2 Proposed Amendments are Allowable
- 2.23.14.4.3 Proposed Amendments are not Allowable
- 2.23.14.4.4 Further Proposed Amendments
- 2.23.14.4.5 Dealing with Comments
- 2.23.14.5 Amendments as a Result of a Decision
- 2.23.14.6 Opposing Allowance of the Amendments
- 2.23.14.7 Amendments Where Opposition Decision is Being Appealed
- 2.23.15 Opposition to Amendments
- 2.23.16 Amendment of Refused Application
- Annexes
- 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)
- 2.24.2.1 Withdrawal Opportunity and Effect
- 2.24.2.2 The Request for Withdrawal
- 2.24.2.3 PCT Application
- 2.24.2.4 Stated Disinterest in Proceeding with the Application
- 2.24.2.5 Indexing if Withdrawn After OPI
- 2.24.2.6 Amendments Proposed After Withdrawn
- 2.24.2.7 Related Applications
- 2.24.3 Lapsing of an Application
- 2.24.3.1 Lapsing Under Section 142
- 2.24.3.2 Lapsing for Non-payment of Continuation Fee
- 2.24.3.3 Lapsing Under Section 148
- 2.24.3.4 Lapsing Under Regulations 3.2A(5) and 3.2B(3)
- 2.24.3.5 Lapsing under Regulation 22.2B
- 2.24.4 Extension of Term (Chapter 6, Part 3)
- 2.24.5 Dealing with Lapsed, Withdrawn, Refused, Revoked, Ceased and Expired Cases
- 2.25 The Register of Patents (Chapter 19)
- 2.25.1 The Register
- 2.25.2 Entries in the Register
- 2.25.3 Registration of, and Amendment to, Particulars
- 2.25.4 Correction of the Register
- 2.25.5 Obtaining Information from Register
- 2.26 Employees, Delegations, Administration
- 2.26.1 Restrictions on Patent Office Staff (Sections 182-185)
- 2.26.1.1 Trafficking in Inventions, Trafficking Exemptions
- 2.26.1.2 Provision of Advice
- 2.26.1.3 Helping to Prepare Documents
- 2.26.1.4 Use of Search Material and Information
- 2.26.2 Conflict of Interest
- 2.26.3 Information Obtainable From the Commissioner (Section 194)
- 2.26.4 Delegations (Section 209)
- 2.26.4.1 Statutory Provisions
- 2.26.4.2 Types of Delegations Made by the Commissioner
- 2.26.4.3 Remaking Delegations
- 2.26.4.4 Revoking Delegations
- 2.26.4.5 General Issues Regarding Delegations
- 2.26.4.6 Preparation of Delegations
- 2.26.4.7 Implied Delegations
- 2.26.5 Secret Cases
- 2.27 Payment of Fees (Section 227)
- 2.27.1 Prescribed Fees
- 2.27.2 Fee Payment Basis
- 2.27.3 Fees Not Paid or Requested
- 2.27.4 When Refund or Transfer Not Available
- 2.27.5 Actioning of Requests for Refund or Exemption
- 2.27.6 Mention of Fee Treatment in Examiner's Report
- 2.27.7 Error or Omission in the Patent Office
- 2.27.8 Continuation Fee Timing
- 2.27.9 Exemption From Fees
- 2.27.10 Refund of Certain Fees Regulation 22.7(1)
- 2.28 Transitional and Savings Provisions
- 2.28.1 Introduction
- 2.28.2 Provisions of the Patents Act 1990 (as in Force Immediately Before 15 April 2013)
- 2.28.3 Patent Applications Filed, and Patents Granted, Under the Patents Act 1952
- 2.29 Formalities and Forms
- 2.29.1 Introduction
- 2.29.2 Fitness for Reproduction
- 2.29.3 Numbering of Pages
- 2.29.4 Substitute Pages of Specifications
- 2.29.5 Substitute Documents
- 2.29.6 Units and Terminology
- 2.29.7 Forms
- 2.29.8 Return or Deletion of Filed Documents
- 2.29.9 Requirements for Amino Acids and Nucelotide Sequences on Compact Disc
- 2.29.10 Signature Requirements for Received Documents
- 2.29.11 Drawings, Graphics and Photographs
- 2.29.12 Scandalous Matter
- 2.29.13 Numbering of Claims
- 2.30 Patent Deed
- 2.31 Innovation Patents
- 2.31.1 Features of the System
- 2.31.1.1 Introduction
- 2.31.1.2 Filing
- 2.31.1.3 Formalities Check
- 2.31.1.4 Acceptance and Grant
- 2.31.1.5 Examination
- 2.31.1.6 Certification
- 2.31.1.7 Opposition
- 2.31.1.8 Re-Examination
- 2.31.1.9 Ceasing/Expiring
- 2.31.1.10 Amendments
- 2.31.1.11 Notification by Third Parties
- 2.31.2 Types of Innovation Patent Application
- 2.31.2.1 Section 79B and Section 79C Divisional Applications
- 2.31.2.2 Association with Provisional Applications
- 2.31.2.3 Patents of Addition Innovation
- 2.31.2.4 Convention Applications
- 2.31.2.5 International (PCT) Applications
- 2.31.2.6 Parallel Applications
- 2.31.3 Formalities Check for Innovation Patents
- 2.31.4 Examination
- 2.31.4.1 Introduction
- 2.31.4.2 Period for Examination to be Carried Out
- 2.31.4.3 Grounds of Examination
- 2.31.4.3A Grounds of Examination
- 2.31.4.4 Ground (1): Section 40
- 2.31.4.5 Ground (2): Subsection 18(1A)
- 2.31.4.5.1 Requirements
- 2.31.4.5.2 Patentable Subject Matter (Manner of Manufacture)
- 2.31.4.5.3 Novelty
- 2.31.4.5.4 Innovative Step
- 2.31.4.5.4A Innovative Step
- 2.31.4.6 Ground (3): Subsections 18(2) and (3)
- 2.31.4.7 Amendments
- Annex A - Procedural Outline for Innovation Patent Application Formalities Check by Examiners
- Annex B - Procedural Outline for Examination of an Innovation Patent
- Annex C - Key Features of Innovation Patent System
- Annex D - Innovation Patent Certification Form
- 3. Oppositions, Disputes and Extensions
- 3.1 Role and Powers of the Commissioner in Hearings
- 3.2 Opposition, Disputes and Other Proceedings - Procedural Summaries
- 3.2.1 Section 59 - Opposition to Grant of a Standard Patent
- 3.2.1.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.1.2 Filing the Statement of Grounds and Particulars
- 3.2.1.3 Evidence and Evidentiary Periods
- 3.2.1.4 Finalising the Opposition
- 3.2.2 Section 101M - Opposition to an Innovation Patent
- 3.2.2.1 Commencing the Opposition - Filing the Opposition Documents
- 3.2.2.2 Evidence and Evidentiary Periods
- 3.2.2.3 Finalising the Opposition
- 3.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent
- 3.2.3.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.3.2 Filing the Statement of Grounds and Particulars
- 3.2.3.3 Evidence and Evidentiary Periods
- 3.2.3.4 Finalising the Opposition
- 3.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document
- 3.2.4.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.4.2 Filing the Statement of Grounds and Particulars
- 3.2.4.3 Evidence and Evidentiary Periods
- 3.2.4.4 Finalising the Opposition
- 3.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)
- 3.2.5.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.5.2 Filing the Statement of Grounds and Particulars
- 3.2.5.3 Evidence and Evidentiary Periods
- 3.2.5.4 Finalising the Opposition
- 3.2.6 Reg 22.21(4) - Opposition to Grant of a Licence
- 3.2.6.1 Commencing the Opposition - Filing a Notice of Opposition
- 3.2.6.2 Filing the Statement of Grounds and Particulars
- 3.2.6.3 Evidence and Evidentiary Periods
- 3.2.6.4 Finalising the Opposition
- 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
- 3.3.1.1 Direction to Stay an Opposition Pending Another Action
- 3.3.1.2 Further and Better Particulars
- 3.3.1.3 Time for Filing Evidence in a Substantive Opposition
- 3.3.1.4 Time for Filing Evidence in a Procedural Opposition
- 3.3.1.5 General Conduct of Proceedings
- 3.3.1.6 Further Directions
- 3.3.2 Directions that an Application Proceed in Different Name(s) - Section 113
- 3.4 Opposition Documents - Requirements and Amendments
- 3.4.1 The Notice of Opposition
- 3.4.2 The Statement of Grounds and Particulars
- 3.4.3 Amending Opposition Documents
- 3.4.4 Filing Opposition Documents
- 3.5 Evidence
- 3.5.1 Presentation of Evidence
- 3.5.1.1 Written Evidence and Declarations
- 3.5.1.2 Oral Evidence
- 3.5.1.3 Physical Evidence - Special Considerations
- 3.5.2 Admissibility of Evidence
- 3.5.3 Evidence Filed Out of Time
- 3.6 Production of Documents, Summonsing Witnesses
- 3.6.1 Requests for the Commissioner to Exercise Powers under Section 210(a) and (c)
- 3.6.2 Basis for Issuing a Summons
- 3.6.3 Basis for Requiring Production
- 3.6.4 Reasonable Expenses
- 3.6.5 Complying with the Notice or Summons, Reasonable Excuses
- 3.6.6 Sanctions for Non-Compliance
- 3.6.7 Schedule to Requests for Summons or Notice to Produce
- 3.7 Withdrawal and Dismissal of an Opposition
- 3.7.1 Withdrawal of an Opposition
- 3.7.2 Dismissal of an Opposition
- 3.7.2.1 Requests for Dismissal
- 3.7.2.2 Dismissal on the Initiative of the Commissioner
- 3.7.2.3 Reasons for Dismissal
- 3.7.3 Withdrawal of an Opposed Application
- 3.8 Hearings and Decisions
- 3.8.1 Setting Down Hearings
- 3.8.1.1 Setting of Hearing
- 3.8.1.2 Location and Options for Appearing
- 3.8.1.3 Hours of a Hearing
- 3.8.1.4 Hearing Fee
- 3.8.1.5 Who May Appear at a Hearing?
- 3.8.1.6 Relevant Court Actions Pending
- 3.8.2 Hearings Procedure
- 3.8.2.1 Overview of Proceedings
- 3.8.2.2 Adjournment of Hearings
- 3.8.2.3 Contact with Parties Outside of Hearing
- 3.8.2.4 Hearings Involving Confidential Material
- 3.8.2.5 Consultation with Other Hearing Officers
- 3.8.2.6 Hearings and the Police
- 3.8.3 Ex Parte Hearings
- 3.8.4 Natural Justice and Bias
- 3.8.4.1 Rules
- 3.8.4.2 Waiving of Objection of Bias by Standing by until Decision Issued
- 3.8.4.3 Bias as a Result of Contact with Parties Outside of Hearing
- 3.8.4.4 Bias as a Result of Other Proceedings Involving the Same Parties
- 3.8.5 Principles of Conduct
- 3.8.5.1 Lawfulness
- 3.8.5.2 Fairness
- 3.8.5.3 Rationality
- 3.8.5.4 Openness
- 3.8.5.5 Diligence and Efficiency
- 3.8.5.6 Courtesy and Integrity
- 3.8.6 Decisions
- 3.8.6.1 Written Decisions
- 3.8.6.2 Time for Issuing a Decision
- 3.8.6.3 Publication of Decisions
- 3.8.6.4 Rectification of Errors or Omissions in Decisions
- 3.8.6.5 Revocation of Decisions
- 3.8.7 Further Hearings
- 3.8.8 Final Determinations
- 3.8.8.1 Overview of Proceedings
- 3.8.8.2 Applicant Does Not Propose Amendments
- 3.8.8.3 Opponent Withdraws the Opposition
- 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
- 3.9.1 Principles in Awarding Costs
- 3.9.2 Scale of Costs, Variation of the Scale
- 3.9.3 Awarding Costs, Taxation
- 3.9.4 Security for Costs
- 3.9.5 Exemplary Situations in Awarding Costs
- 3.10 The Register of Patents
- 3.10.1 What is the Register?
- 3.10.2 Recording Particulars in the Register
- 3.10.2.1 Recording New Particulars in the Register
- 3.10.2.2 Change of Ownership
- 3.10.2.2.1 Assignment
- 3.10.2.2.2 Change of Name
- 3.10.2.2.3 Bankruptcy
- 3.10.2.2.4 Winding Up of Companies
- 3.10.2.2.5 Death of Patentee
- 3.10.2.3 Security Interests
- 3.10.2.4 Licences
- 3.10.2.5 Court Orders
- 3.10.2.6 Equitable Interests
- 3.10.2.7 Effect of Registration or Non-Registration
- 3.10.2.8 Trusts
- 3.10.2.9 False Entries in the Register
- 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
- 3.11.1.1 Relevant Act
- 3.11.1.2 Subsection 223(1) - Office Error
- 3.11.1.2.1 Extensions under Subsection 223(1) to Gain Acceptance
- Annex A - Section 223(1) Extension of Time for Acceptance File Note
- 3.11.1.3 Subsection 223(2) - Error or Omission and Circumstances Beyond Control
- 3.11.1.3.1 The Law
- 3.11.1.3.2 Subsection 223(2)(a) - Error or Omission
- 3.11.1.3.3 Section 223(2)(b) - Circumstances Beyond Control
- 3.11.1.3.4 Filing a Request under Subsection 223(2)
- 3.11.1.3.5 The Commissioner's Discretion
- 3.11.1.4 Subsection 223(2A) - Despite Due Care
- 3.11.1.5 Common Deficiencies in Requests under Section 223(2) or (2A)
- 3.11.1.6 Advertising an Extension - Subsection 223(4)
- 3.11.1.7 Extension of Time for an Extension of Term
- 3.11.1.8 Grace Period Extensions
- 3.11.1.9 Extension of Time to Gain Acceptance
- 3.11.1.10 Examination Report Delayed or Not Received
- 3.11.1.11 Co-pending Section 104 Application - Budapest Treaty Details
- 3.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Applicaiton
- 3.11.1.13 Person Concerned: Change of Ownership
- 3.11.1.14 Date of a Patent Where an Extension of Time is Granted to Claim Priority
- 3.11.2 Extensions of Time - Reg 5.9
- 3.11.2.1 Requesting an Extension of Time
- 3.11.2.2 Application of the Law
- 3.11.2.3 Justification for the Extension
- 3.11.2.4 Discretionary Matters
- 3.11.2.5 Period of an Extension
- 3.11.2.6 A Hearing in Relation to an Extension
- 3.11.2.7 Parties Involved in Negotiations
- 3.11.2.8 Review of a Decision to Grant or Refuse an Extension
- 3.11.2.9 "Out of Time" Evidence
- 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
- 3.12.1.1 Pharmaceutical Substance per se
- 3.12.1.2 Meaning of Pharmaceutical Substance
- 3.12.1.3 Meaning of "when produced by a process that involves the use of recombinant DNA technology"
- 3.12.1.4 Meaning of "mixture or compound of substances"
- 3.12.1.5 Meaning of "in substance disclosed"
- 3.12.1.6 Meaning of "in substance fall within the scope of the claim"
- 3.12.1.7 Included in the Goods
- 3.12.1.8 First Regulatory Approval Date
- 3.12.2 Applying for an Extension of Term
- 3.12.2.1 Documentation Required
- 3.12.2.2 Time for Applying
- 3.12.2.3 Extension of Time to Apply for an Extension of Term
- 3.12.3 Processing an Application for an Extension of Term
- 3.12.3.1 Initial Processing
- 3.12.3.2 Consideration of the Application
- 3.12.3.3 Grant of Application for Extension of Term
- 3.12.3.4 Refusal of Application for Extension of Term
- 3.12.4 Calculating the Length of the Extension of Term
- 3.12.5 Patents of Addition
- 3.12.6 Divisional Applications
- 3.12.7 Opposition to Extension of Term
- 3.12.8 Relevant Court Proceedings Pending
- 3.12.9 Rectification of the Register
- 3.13 Documents not OPI - Orders for Inspection
- 3.13.1 Documents not-OPI by direction of the Commissioner - Regulation 4.3(2)(b)
- 3.13.2 Inspection of non-OPI documents
- 3.14 Appeals, AAT and Judicial Review, Other Court Actions Involving the Commissioner, Section 105 Amendments
- 3.14.1 Appeals to the Federal Court
- 3.14.2 AAT Review
- 3.14.3 Judicial Review
- 3.14.4 Other Court Actions Involving the Commissioner
- 3.14.5 Section 105 Amendments
- 3.15 Computerised Decisions
- 4.1 Searching
- 4.1.1 Objectives of the Search
- 4.1.2 Search Theory
- 4.1.3 Initial Search Considerations
- 4.1.3.1 Construction and the Inventive Concept
- 4.1.3.2 Earlier Search Results
- 4.1.3.3 Additional Searching
- 4.1.3.4 Top-Up Searching
- 4.1.3.5 Preliminary Search
- 4.1.3.6 Applicant and/or Inventor Name Searching
- 4.1.4 Development of the Search Strategy
- 4.1.4.1 Three Person Team (3PT)
- 4.1.4.2 Search Strategy Considerations
- 4.1.4.2.1 Independent Claims
- 4.1.4.2.2 Dependent Claims
- 4.1.4.2.3 Broad Claims
- 4.1.4.2.4 Reserving the Search
- 4.1.4.2.5 Controlled Language
- 4.1.4.3 Search Area
- 4.1.5 Conducting the Search
- 4.1.6 Recording the Search Details
- Annexes
3.11.2.2.1 Application of Regulation 5.9
Note: This information applies to oppositions commenced on or after 15 April 2013, and oppositions commenced before 15 April 2013 provided an evidentiary period commenced on or after 15 April 2013.
The former reg 5.10 continues to apply to extend an evidentiary period that commenced before 15 April 2013. (See 3.11.3 Extensions of Time – Regulation 5.10).
Summary Guidance for Parties Filing Evidence
When planning for the filing of evidence it is important that parties are aware of the requirements for obtaining extensions of time. There are strict requirements for obtaining extensions of time for filing evidence. Absent exceptional circumstances, parties must show that they have made all reasonable efforts to comply with all filing requirements, and that they have acted promptly and diligently at all times to ensure the evidence is filed within the period. Detailed guidance is found below, however key points for parties to have in mind at an early stage (i.e. before the start of an evidence period) include:
- Reasonableness of conduct relates to conduct across the whole of the opposition, so it is useful to plan early, where possible, for the filing of evidence, including the consideration of appropriate experts.
- Important to obtaining an extension of time is an explanation of what was done, when it was done, how it was done and by whom. A narrative along with a chronology of actions is typically very helpful.
- Acting reasonably at all times, along with being prompt and diligent, is not a standard of perfection. What is required is a reasonable plan executed well, with no significant unexplained delays. An explanation of the circumstances of the case is necessary for a delegate to determine whether a party has been sufficiently prompt and diligent.
- Where simple errors on the part of a party prevent evidence being file on time, an extension may still be appropriate.
What is sufficient depends on the case, but in general there should be an explanation of the overall strategy for preparing evidence, a description of what was done, and when it was done, and a discussion of any unexpected difficulties that arose. Providing a fulsome picture of the circumstances upfront will assist in reducing the time taken to resolve the extension. Where the information initially provided is insufficient to satisfy the delegate, an opportunity for the party to provide further information is likely to be provided, and the delegate will clearly outline specific information that could be provided by the party so as to satisfy the criteria. Any further information requested, or queries raised by the delegate should be directly addressed in responding.
General Principles
Under reg 5.9(2), the Commissioner may extend an evidentiary period only if the Commissioner is satisfied that:
a. the party who intended to file the evidence in the period:
i. has made all reasonable efforts to comply with all relevant filing requirements under Chapter 5; and
ii. despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
b. there are exceptional circumstances that warrant the extension.
The construction of reg 5.9 was considered in TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 (TRED). The delegate found that:
- whilst the two ‘legs’ of reg 5.9(2)(a) are similar, the ‘reasonable’ leg relates to ‘all relevant filing requirements’, whereas the ‘promptly and diligently’ leg relates to the period for filing ‘the appropriate evidence’ (TRED at [28]). Thus, reasonableness relates to conduct over the whole of the opposition and not just a particular evidence stage. Often where a person has acted reasonably, they will also have acted promptly and diligently.
The question to consider is whether a person seeking an extension satisfies each leg of the test. Where they fail to satisfy one of the legs, an extension will not be available (in the absence of exceptional circumstances) (TRED at [28]). - ‘the party’ means ‘party and their attorney or agent’ and therefore the actions of attorneys or agents are relevant considerations when determining whether or not to allow an extension of time (TRED at [29]).
To determine whether an extension may be granted, the following questions should be considered:
- Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
- Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
- Were there exceptional circumstances that warrant the extension?
An extension of time for filing evidence may only be granted if the answer to questions 1 and 2 is YES, or the answer to question 3 is YES. Where this requirement is met, the Commissioner must then consider whether there are any discretionary reasons why the extension should not be granted (TRED at [34]-[35]).
Reasonable Efforts, Prompt and Diligent Actions
The factors to consider when determining whether a party has made all reasonable efforts are generally relevant to the question of whether the party has acted promptly and diligently (TRED at [62]). It is also necessary to consider the whole of the evidentiary period, rather than each event that occurred during the period in isolation (TRED at [60]).
In particular, attention should be given to the actions undertaken by the party during at least the period in question. An understanding of what was done, when it was done, how it was done and by whom it was done, and the nature of the evidence being prepared, will assist the Commissioner in deciding whether a party has made all reasonable efforts to comply with the relevant filing requirements (TRED at [40]).
In seeking an extension of time, parties should provide sufficient information to enable the Commissioner to determine whether their actions have been reasonable, prompt and diligent:
‘An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, by whom it was done, as appropriate to the case) covering the period in question.’ (TRED at [76])
In acting reasonably, it is not expected that a person do the impossible (TRED at [51]).
Exceptional Circumstances
Exceptional circumstances include circumstances beyond the control of a party that prevents the party from complying with a filing requirement, an error or omission by the Commissioner that prevents a party from complying with a filing requirement, or an order of a court.
‘These matters give some guide to the other situations that would be regarded as exceptional circumstances: matters outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence’. (TRED at [64])
General comments: The party seeking an extension must provide sufficient information for the Commissioner to be satisfied that an extension is appropriate. What is sufficient depends on the case, but in general there should be an explanation of the overall approach that the party has adopted (i.e. the strategy for preparing evidence), a description of what was done, and when it was done (focusing on the major parts of the evidence preparation process), and a discussion of any unexpected difficulties that arose. Where the information is insufficient to satisfy the delegate, the delegate may allow an opportunity for the party to provide further information. However, if the information is grossly inadequate, the delegate may set the matter for hearing immediately.
When applying for an extension of time, parties should provide sufficient information to enable the Commissioner to determine whether their actions have been reasonable, prompt and diligent.
‘A party seeking an extension of time will assist the Commissioner (and advance their own cause) if they provide information about what they did, when they did it, and how long those actions took. When considering such information, it is relevant to consider whether there have been any significant unexplained delays. The presence of significant delays without a reasonable explanation is the antithesis of acting promptly and diligently.’ (Fugro Airborne Surveys Corp v Geotech Airborne Limited [2014] APO 23 at [20])
Whilst a list of actions undertaken provides some information, it is the narrative that puts those actions into context that is important (Clarus Therapeutics, Inc. v Lipocine, Inc. [2014] APO 50 at [21]). Parties should explain their strategy for preparing evidence and not rely on an inference drawn from their submissions (Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2014] APO 74 at [20]). Thus, a long chronology that is provided without adequate explanation may not assist in determining whether a party has made reasonable efforts or acted promptly and diligently (Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21).
Parties should endeavour to provide all relevant information at the time of applying for an extension, as opposed to waiting until the delegate requests further information (Osmose New Zealand v Zelam Limited [2014] APO 49 at [15]).
Reasonable Efforts to Comply
Time Period to Consider
The condition in paragraph 5.9(2)(a)(i), that a party make all reasonable efforts to comply with all relevant filing requirements, is intended to import a consideration of the reasonableness of a party’s conduct over the totality of the opposition proceedings, rather than its compliance with a particular evidentiary period in question (Merial Limited v Novartis AG [2013] APO 65 at [16]; Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15 at [18]).
Actions of Applicant
When seeking an extension of time to file evidence in answer, if an applicant can demonstrate that it had given consideration to its case at an early stage, such information will assist the Commissioner. However, given the costs associated with engaging appropriate experts and drafting declarations, it may be reasonable for the applicant to defer such actions until the evidence in support is filed (Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [18]; Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21 at [28]).
The volume of evidence can also be a relevant consideration when assessing whether the actions of the applicant were reasonable. (Aquatron Robotic Technology LTD v Zodiac Pool Care Europe [2016] APO 88 at [48])
Establishing Prompt and Diligent Action
Time Period to Consider
When determining whether a party has acted promptly and diligently at all times, consideration should be given to all the actions of the party in relation to compliance with the evidentiary period as a whole. Thus, where a request for an extension of time follows the grant of a previous extension of time, all actions of the party during the evidentiary period should be considered and not just its failure to comply within the period of the extension already granted (Merial Limited v Novartis AG [2013] APO 65 at [18]).
Length of Time Taken to Complete Actions
The fact that an action takes place over several months does not automatically mean that a party has not been prompt and diligent (Osmose New Zealand v Zelam Limited [2014] APO 49 at [18]). Consideration should be given to whether the nature of the action is such that it would be reasonably expected to take an extended time, and whether the time taken to complete a task prevents other actions from occurring concurrently. In considering the length of time taken, it should be noted:
‘While it might have been possible to carry out some activities faster, the time taken is not outside the range of prompt and diligent given the work that was involved.’ (Osmose New Zealand supra at [22])
It should also be remembered that ‘promptly and diligently’ is not setting a standard of perfection (Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63 at [33]).
Misunderstanding of Law
‘While a misunderstanding of the law may be the cause of a failure to act promptly and diligently, I do not accept that it can make the actions of a party prompt and diligent where they otherwise would not have been.’ (Fonterra Co-operative Group Limited v Meiji Dairies Corporation [2014] APO 11 at [19])
Explanation of Delay
Where there are significant delays or gaps in a chronology, an explanation should be provided. As stated in Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [19]:
‘Any significant gaps or delays in a chronology, where relevant action would generally be expected, should be explained. The nature of the delay and what was done to attempt to mitigate the delay would be a relevant consideration for an extension of time. An explanation of the unforeseen and what was done to mitigate that would generally be considered favourably. A failure to file evidence due to foreseen or foreseeable circumstances would generally not be considered favourably, and effort to address such circumstances in an application or submissions for an extension of time would generally be counter-productive.’
Consideration of Exceptional Circumstances
A change in the Regulations would not make it unreasonable to insist that a party file its evidence and is not an exceptional circumstance (TRED at [67]). Similarly, a short period of illness is not exceptional (Novartis Vaccines & Diagnostics, Inc. v Wyeth Holdings Corporation [2014] APO 65 at [49]).
Although circumstances may not be regarded as exceptional when considering the preparation of evidence, they may be a relevant context when assessing whether a party has acted promptly and diligently (Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63 at [46]).
Discretionary Matters
The power to extend an evidentiary period under reg 5.9 is discretionary. Thus, where the requirements of reg 5.9(2)(a) or reg 5.9(2)(b) have been met, an extension of time is not automatic. Where a party deliberately misleads the Commissioner in order to obtain an extension, either by explicit statement or omission, the Commissioner would be entitled to take this into account when exercising her discretion (Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2014] APO 74 at [34]).
Consideration may also be given to the nature and significance of the evidence that is being prepared, as well as the private and public interests that exist.
Amended Reasons
Amended Reason | Date Amended |
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