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3.5.4 Other restrictions imposed on examiners

Date Published

Overview

There are restrictions on how examiners can handle intellectual property. For example, there are restrictions on:

  • how information held by IP Australia is used; and
  • preparing and obtaining intellectual property.

Examiners may be faced with requests for help to prepare documents and resolve objections in either a work or a private capacity. This section provides information on ways that examiners may and may not respond to these requests.​​​​​​​

Preparation of documents and resolving objections

Employees of IP Australia cannot prepare or help to prepare:

  • a patent specification, including the claims, description, drawings, and sequence listings; or
  • amendments to any part of a patent specification.

However, they can help to complete official forms (forms on the IP Australia website) such as the patent request or request to amend.

Work capacity

Examiners should be mindful of the level of assistance they provide in examination reports and in any conversations with applicants or attorneys. The level of assistance should not reach the level of ‘helping to prepare’ a patent specification.

For example, objecting to a claim and noting that the objection would not apply if, for example, a particular phrase is used is not ‘helping to prepare’ - it is illustrating the nature of the problem, not giving advice to use the particular phrase. However, stating that a particular phrase must be used would be seen as ‘helping to prepare’ and as limiting the customer’s options.

When faced with a difficult examination issue, applicants may want to discuss the objection with examiners to work out how to resolve it. Examiners should place records of any conversations on file. Be particularly careful when dealing with private applicants, as they often seek guidance on what actions to take. Be careful when discussing the reason for the objection and never suggest an amendment the applicant could make to overcome the objection.

When dealing with attorneys, examiners should focus on the reasons for the objections and not offer opinions on how to deal with the issues.

Private capacity

Examiners can freely discuss the patent system and general requirements for a patent with family and friends, using publicly available information from the IP Australia website.

However, examiners cannot discuss an alleged invention. They must avoid discussing:

  • how a person should draft a specification for their particular invention or for a hypothetical invention; or
  • whether a particular idea is patentable.

Examiners can suggest:

  • reading Australian patent specifications to see how they are drafted;
  • conducting a search to determine if the idea is new; and
  • seeking assistance from patent attorneys, business planners, grant programs etc.

Examiners as inventors

Examiners can prepare a patent specification for their own invention. However, they cannot use IP Australia time or IP Australia equipment.

Difficulties may arise in the case of multiple inventors. Where one inventor is an IP Australia employee and the other is not, the employee inventor cannot prepare the specification on behalf of both inventors.

Where IP Australia employees acquire an invention or patent by bequest or devolution of law, they will usually not be the inventor. This means they cannot prepare the specification.

Use of search facilities for private purposes

Examiners are free to use public search facilities for their own benefit. But they cannot use public search facilities for private purposes in IP Australia time or using IP Australia equipment.

Examiners cannot use for their own benefit any search facilities that contain IP Australia records not available to the public, for example, the Non-OPI Search in Automated Preliminary Search Tool.

Examiners cannot use for their own benefit any information in applications that are not open for public inspection. Such information cannot be used for financial advantage and this may incur penalties under the Patents Act and the Public Service Act 1999. It may also be an offence of insider trading under the Corporations Law.

Trafficking in inventions

IP Australia employees cannot engage in transactions involving an invention or a patent. Prohibited transactions involving an invention or a patent include:

  • acquisition for the purpose of manufacture;
  • acquisition for licensing to others to manufacture;
  • acquisition to exclude competition to a family business;
  • brokering the transfer of an invention between companies;
  • acting as an intermediary for the transfer of a patent between companies; and
  • transactions of a family company or trust where an employee controls or directs activity (employees involved in such arrangements will need to obtain their own legal advice).

There are some exceptions (see Exemptions below). The rule against trafficking in inventions cannot be waived or relaxed. Any transaction by an IP Australia employee involving an invention or patent (where an exemption does not apply) is void. Any such transaction is an offence and carries a penalty.

This prohibition does not apply to transactions a person may have made before they were employed at IP Australia or after they leave IP Australia. However, a patent owner cannot sell, assign, or transfer the patent while employed at IP Australia.

Exemptions

Exemptions to the rule against trafficking in inventions apply where:

  • the IP Australia employee is the inventor; or
  • the employee acquires the invention or patent by bequest or devolution by law.

These employees are free to:

  • apply for patents;
  • assign, sell, or license these patents; and
  • dispose of inventions.

However, other restrictions may arise under the Public Service Act.

Amended Reasons

Amended Reason Date Amended
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