During examination, the date of publication of a complete specification is significant in determining whether that document can be used as the basis for a novelty (including "whole of contents" novelty) objection, or an inventive/innovative step objection.

Date of OPI

Under the provisions of s54, a complete specification filed in respect of an application for a standard patent (other than a PCT application) becomes open to public inspection (OPI) on the date upon which it is advertised as such in the Official Journal. Apart from the exceptions covered by the specific provisions within s54, this date is either:

the earliest convenient date after 18 months from the priority date of the application; or
the date upon which acceptance is advertised in the Official Journal.

Similarly, in the case of innovation patents, the complete specification becomes OPI on the date upon which it is advertised as such. Under s62(2), this date is the date upon which a notice is published in the Official Journal that the patent is granted and that the request and complete specification are OPI.

For national phase applications filed on or after 1 January 2004 (and which enter the national phase more than 18 months from the priority date), the OPI date, pursuant to reg 8.3(1D) (now succeeded), was generally taken to be the date the PCT pamphlet was published under Article 21.

For national phase applications filed on or after 15 April 2013 the OPI date is determined in accordance with s56A and reg 4.4.

Since the Official Journal is published weekly, all specifications due to become OPI in a particular week become OPI on the same day.

Specifications which have not been notified in the Official Journal as OPI, apart from those relating to international applications, are not OPI even though they were due to become so under the provisions of s54 or s62(2). Where examiners become aware that a specification has not been notified as OPI in the Official Journal, even though it should have been, the specification should not be considered as OPI for the purposes of any objection under the Act. The matter should also be brought to the attention of CEG.

OPI Notified by Error

Where examiners become aware that a specification was notified as OPI by error, this should be brought to the attention of CEG. If only a short period of time has elapsed since the erroneous notification took place, then provided copies of the specification have not been prepared and located where members of the public could have accessed them, the error may possibly be rectifiable by way of a corrigendum in the Official Journal. However, if publication has in fact occurred, then it is irreversible, irrespective of the notification in the Official Journal having been entered in error.

Where a specification which has been notified as OPI in error could be used as a citation subject to having in fact become OPI on the date of the notification, examiners, on referring the matter to CEG, should ask to be advised as soon as a determination is made as to whether a corrigendum is to be prepared. No examination report should be issued pending advice on the determination.

Obtaining OPI Date

When citing the date on which an Australian specification became OPI, examiners are not required to check the date in the Official Journal. Instead, the date may be taken from a copy of the printed specification (where available), from the ‘Aust. OPI’ date on the Summary screen of the ECase file or from the ‘Australian OPI Date’ on AusPat.

Exceptions to documents being published

Non-PCT Applications

When a complete specification becomes OPI, all documents associated with the application and in the possession of the Office become OPI at the same time, with the exception of the following (s55(1) and reg 4.3):

documents that would be privileged from production in legal proceedings on the ground of legal professional privilege;
documents subject to court or tribunal orders prohibiting disclosure of the document or information that it contains; and
a document that the Commissioner has reasonable grounds for believing should not be made OPI. (Note that under s56, such documents are available for inspection upon request. For further information, see 7.13 Documents Not OPI – Orders for Inspection).

As noted above, all documents associated with the application (whether or not they are physically present on a paper case file or attached to an Ecase file) become OPI when the complete specification becomes OPI. This includes examiners' reports, the search information statement (or information sheet), attorney correspondence, any file notes, quality assurance check sheets, any citations associated with the case file (including any annotations on the citations), as well as associated provisional specifications and basic documents.

When a notice of acceptance of a standard patent (or grant of an innovation patent) is published in the Official Journal, the following documents become OPI if they are not already:

all documents filed in relation to the application (or the patent) whether before or after acceptance (or grant);
copies of all documents relating to the application (or patent) given by the Commissioner to the applicant (or patentee); and
any documents filed after the patent ceases, is expired or revoked;

with the exception of the following:

documents subject to court or tribunal orders prohibiting disclosure of the document or information that it contains; and
a document that the Commissioner has reasonable grounds for believing should not be made OPI.

Hence in the case of applications for standard patents, documents subject to legal professional privilege become OPI when acceptance is advertised.

A specification or other document which has become OPI is deemed to have been published (s55(3)).

The "specification" referred to in s55(1) is the specification originally filed and any substitute specification (or part of a specification) that may have been subsequently filed.

Where a specification is amended prior to becoming OPI, then upon notification that the specification is OPI, both the unamended and the amended forms of the specification are OPI. Similarly, where the specification is amended after notification that the specification is OPI, the amended form of the specification is also OPI. Proposed or requested amendments are OPI when the complete specification becomes OPI, whether or not they have been allowed.

PCT Applications

The provisions relating to the publication and inspection of PCT applications are essentially the same as those outlined above (see s56A and reg 4.4). Note, however, that where the International Bureau does not publish a document that is part of a PCT application and which contains sensitive personal or financial information that is not essential to the working of an invention, that document must not be made OPI unless:

the information has been redacted; and
the redacted document is not covered by points a) to c) above.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023

5.6.1.2 Effect of Publication and OPI

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Significance of Publication