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3.3.4 Communicating with the Applicant and Third Parties

Date Published
 
 
 

Overview

The manner and timing of how we communicate with our stakeholders can result in overall efficiencies for the office and the applicant or attorney. While the bulk of communication with the applicant is via written reports, examiners should consider communicating issues to the applicant/attorney through other channels if it’s more efficient and effective to do so.  ​​​​​​​

This section provides examiners with information on the communication channels that can be utilised to assist in the clarification of issues or to resolve minor matters that will progress the application in the most efficient manner.

 

Communication by phone

Call initiated by the examiner

Where the examination of a case is being stalled by relatively minor issues. A short phone call may be an efficient way of resolving the issues rather than waiting for a response to an examination report.

Some examples of issues that could be easily resolved by phoning the applicant or attorney include:

  • postponement of Acceptance is the only issue remaining;
  • minor typographical or drafting errors;
  • a search where the scope of the invention is unclear, a short phone call can clarify the scope and help target the search;
  • final date of acceptance is approaching, requiring urgent response; and/or
  • lack of unity, where it is unclear which invention the applicant wants to pursue.

Note that to call New Zealand applicants/attorneys, add 0011 64 to the front of the phone number.

Calls initiated by the applicant/attorney

In some cases, examiners may receive a call from the applicant or attorneys. The purpose of these calls can vary, for instance the attorney might be seeking clarification on the reasoning provided in the report regarding particular claims or citations. Clarifying your reasoning or the position taken in the report can assist the attorney in formulating a response that best addresses the issues, resulting in the efficient progression of the application.   

Sometimes, attorneys may seek a preliminary opinion on potential amendments or submissions they intend to file. In these situations, examiners can talk generally about the issues raised by the attorney to clarify the points made in the report. Examiners need to be careful not to provide a definite opinion on the potential submissions. It is not possible to make a detailed assessment of the response or any amendments that are unseen. Additionally, the assessment of amendments cannot be done in a vacuum, it requires consideration of the specification as a whole. Where the attorney presses the examiner for an opinion on potential amendments, examiners need to remind the attorney that they will need to formally file the response for consideration.     ​​​​​​​

Examiners may at times be asked questions regarding commercialisation of the invention. In these cases, examiners will need to refer the applicant to the appropriate resources (for example, the SME toolbox on IP Australia’s website) to obtain professional advice.

 

Communication by email​​​​​​​

Email may be utilised under similar circumstances as phone communication. Email can be used to make contact with the applicant or attorney if they are having difficulties in contacting them by phone. 

Examiners may also receive requests from the applicant/attorney to provide a copy of their report via email. In cases where a copy is sent via email, examiners will still need to dispatch the report via the official channels.

Email is not an official means for filing a response. Responses to reports must be filed through official recognised channels such as eServices. However, there may be times where examiners are provided with an advance copy of the response from the applicant or attorney via email. Examiners can consider the material in the advance copy but will need to wait for the official lodgement of the response before rendering their opinion on the response.

 

Communication in-person​​​​​​​

Meetings with attorneys or applicants in-person is not a common practice. Face-to-face meetings with the applicant or attorney are limited to extreme circumstances.

Where a face-to-face meeting is requested, the supervising examiner of the section must be informed. The supervising examiner will then consult with the applicant or attorney to determine if a meeting is to take place. If the meeting is to take place with an attorney, then, depending on the matter being discussed, the supervising examiner should either be personally present or appoint a senior examiner to attend. If the meeting is with a private applicant, then a supervising examiner or an Assistant General Manager should be present.

 

Records of conversation

Examiners need to keep a record of all conversations (phone, email, or in-person) with applicants or attorneys. This applies regardless of who initiated the conversation. A record of the conversation must be added to the relevant case file.

See the procedures outlined in RIO Manual - Creating a case note.

What material should the record contain

In general, the record of conversation should include relevant information relating to the matter discussed. This includes information such as:

  • the date and time the conversation took place;
  • the name of the person with whom the conversation took place;
  • a brief summary of the discussion; and
  • follow-up action to be taken. For example, issuing of a further report or written confirmation of proposed amendments.

In addition to this, examiners should be aware that any record placed on file can be accessed by the general public or third parties. Any information recorded should be succinct, factual, and avoid unrelated matters. The record should also adhere to the principles set out in IP Australia’s Privacy Policy.

Privacy concerns

As the record can include private or personal information relating to individuals, examiners will need to inform the applicant/attorney that a record of the conversation will be made and placed on file. 

​​​​​​​If the applicant or attorney expresses any privacy concerns, they should be referred to IP Australia’s Privacy Policy which explains in greater detail the office’s procedures for handling personal information. 

 
 

Amended Reasons

Amended Reason Date Amended

dialling instructions for New Zealand updated due to change to MS teams telephony 
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