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5.6.14.3 Applications concerning ‘Associated Technology’ (Chapter 15 Applications)

Date Published

Patents Act:

  • s147 Certificate by Director as to associated technology  

  • s148 Lapsing etc. of applications  

  • s149 Revocation of direction  

  • s150 Restoration of lapsed application  

  • s151 Reinstatement of application as an international application  

  • s152 Notice of prohibitions or restrictions on publication  

  • s153 Effect of order  

Patents Regulations:

  • Reg 22.21 Protection or compensation of certain persons

Treatment of Applications concerning ‘Associated Technology’(e.g. enrichment of nuclear material) 
 

Issue and effect of Directors certificate

Under the provisions of Chapter 15 of the Patents Act, the Director of Safeguards, Australian Safeguards and Non-Proliferation Office (ASNO), has the power to require the Commissioner to prevent the grant or publication of a specification directed to associated technology. 

Associated technology as defined by the Safeguards Act means a document containing information relating to:

  • the enrichment of nuclear material;
  • reprocessing of irradiated nuclear material;
  • production of heavy water or nuclear weapons; or
  • nuclear information that is covered by an international agreement and is declared by the Minister to be information for the purposes of this definition.
     

This also includes photographs, models, or other types of material from which the above information can be obtained.  Information that is publicly available is excluded from the definition.

Where the Commissioner considers that an application contains or is directed to matter falling within the definition of associated technology, the Commissioner is required to give written notice together with a copy of the application to the Director of Safeguards (s147(1)).  

If the Director of Safeguards is satisfied that the specification includes information relating to associated technologies, then the Director may issue a certificate to this effect.  A copy of the certificate is provided to the Commissioner who must then provide a copy to the applicant (s147(4)). 

The further treatment of the application is dependent on the content of the certificate i.e. any directions made by the Director pursuant to s147(3).  For example, the certificate may contain a direction that the application should lapse.  Lapsing of the application then occurs by virtue of s148(c) of the Patents Act.  Where the application is an international application and IP Australia is the relevant Receiving Office, the certificate may contain a direction that the application should not be treated as an international application. The application then ceases to be treated as an international application per s148(d).

Additional prohibitions or restrictions on the publication or communication of the information in the application can be imposed by the Director of Safeguards through the provision of a written notice to the Commissioner (s152 (1)).  On receipt of such notification the Commissioner must take all necessary step to give effect to the notice (s152(2)).  

Revocation of safeguards direction - Restoration and/or reinstatement of application concerning associated technology

 

Restoration or reinstatement of an application involving associated technology is not possible while any directions from the Director of Safeguards are in force.  An applicant can apply in writing to the Director for revocation of the direction.  Following revocation of the direction the applicant can then seek restoration or reinstatement of the application.

Under s150 of the Act an applicant can request the restoration of an application for a standard patent.  Similarly, an applicant can apply for the reinstatement of an international application (s151(1), s151(2) and s151(3)). The Commissioner must restore or reinstate the application if satisfied, on the balance of probabilities, that there is no other reason not to do so.  

Where the Commissioner reinstates an application as an international application, the application must be treated as an international application. In this context a situation may arise where an international application (which designated Australia) cannot be reinstated as an international application because, under the PCT, it was considered withdrawn. However, if the applicant files a request that the application be treated as a standard patent application, together with any prescribed documents and prescribed fees, then the application must be treated as so requested (s151(4)).

The prescribed documents include a patent request, the complete specification and an abstract (reg 15.2(2)). The description, claims, drawings, graphics, and photographs contained in the international application and filed in the Office are treated as the complete specification for the standard patent application in accordance with s151(4)(f). The filing date accorded to the application and complete specification is the date on which the relevant international application was filed (s151(4)(g)). Any specification (or other document) subsequently filed (for example, with the s151(4)(c) request) is to be regarded as an amendment in anticipation.

Following restoration or reinstatement the application will proceed as normal.

Protections or compensation of third parties  

S150(4) of the Act provides a mechanism for the protection or compensation of persons who exploited or otherwise took definite steps to exploit the relevant invention during the period of lapse.   

In effect s150(4) provides the right for such persons to apply to the Commissioner under provisions of reg 22.21 for the grant of a licence to exploit the invention of the subject application.

Amended Reasons

Amended Reason Date Amended

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