5.6.1 Relevant Dates, Definitions, Legal Standards, and Other Prescribed Matters (e.g. Publication)

Also in this Chapter:

• 5.6.2 Factors to consider before commencing examination
• 5.6.3 The Specification and Claims to Examine;
• 5.6.4 Citations: Prior art base and construction of prior art
• 5.6.5 Novelty, Whole of Contents, and Secret Use;
• 5.6.6 Inventive Step
• 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (s40)
• 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture)
• 5.6.9 Acceptance, Grant, and Refusal of Applications
• 5.6.10 Divisional applications
• 5.6.11 Patents of Addition
• 5.6.12 Preliminary search and Opinion (PSO)
• 5.6.13 Re-examination
• 5.6.14 Secret cases and applications involving associated technologies (i.e. nuclear weapons)
• 5.6.15 Innovation Formalities and Innovative Step
• 5.6.16 Annex A - Procedural Outline for Full Examination of a Standard Patent Application
• 5.6.17 Annex B - Indicators of Special or Different Considerations
• 5.6.18 Annex C - Applicant and Inventor Details as Shown on PCT Pamphlet Front Page
• 5.6.19 Annex D - Example of PCT Pamphlet Front Page​​​​​​​

Sub-chapters:

• 5.6.1.1 Priority dates and Filing Dates

• 5.6.1.2 Effect of Publication and OPI

• 5.6.1.3 Definitions (Invention, Alleged Invention, Meaning of a Document etc.)

• 5.6.1.4 Balance of Probabilities Standard

• 5.6.1.5 Application of the Balance of Probabilities in Examination

Key Legislation:

Patents Act:

• s49 Acceptance of patent request: standard patent  

Key Topics in this Section

• ​​​​​​​5.6.1.1 Priority Dates and Filing Dates;
• 5.6.1.2 Effect of Publication;
• 5.6.1.3 Definitions (Invention, Alleged Invention, Meaning of a Document etc.);
• 5.6.1.4 Balance of Probabilities Standard; and
• 5.6.1.5 Application of the Balance of Probabilities in Examination.

Legal standards applied during examination: Overview

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 set the requirement that a higher standard of proof be applied by the Commissioner when deciding whether or not to accept a standard patent application. Prior to the Raising the Bar Act 2012, the Commissioner was required to accept a patent application ‘unless it appears practically certain’ (Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 that it would be invalid. This was the “benefit of the doubt” test.

Section 49 of the Patents Act (1990), as amended by the Raising the Bar Act 2012, requires the Commissioner to accept a standard patent application if they are satisfied, on the balance of probabilities that:

• the invention is for a manner of manufacture;
• the invention is novel, inventive and useful;
• the specification complies with section 40; and
• other requirements prescribed in the Patents Regulations (1991) are met.

Where the Commissioner is not satisfied, they can refuse to accept the patent application. This is the “balance of probabilities” test.

​​​​​​​The intention of the higher standard of proof is to ensure invalid applications do not proceed to acceptance and grant.