the innovation patent application being a divisional application where the parent application has a date of patent before 26 August 2021;
the innovation patent application being a divisional application where the parent application is a granted innovation patent; or
converting any standard application that has a date of patent before 26 August 2021 to an innovation application before acceptance.

In addition, every claim in an innovation patent must have a priority date that is before 26 August 2021.

Overview

For every innovation patent application filed, the Commissioner must undertake a formalities check (s52(1)). If the application passes the formalities check, the Commissioner must accept the patent request and complete specification (s52(2)).

Regulation 3.2B specifies the formalities that are to be checked. In practice, most formalities will be checked by CEG. Importantly, the formalities check must include checking that the date of patent of the innovation patent application would be before 26 August 2021.

Examiners are only required to check whether the complete specification contravenes s18(2) or s18(3), that is, it must not be in respect of humans, plants or animals, or biological processes for their generation (reg 3.2B(1)(g)).

Please note that s18(3) does not apply if the invention is a microbiological process, or a product of such a process (s18(4)).

Formalities 2 check-compliance with subsections 18(2) and 18(3)

All examiners hold the delegation to undertake a formalities check, which is performed during indexing of the application. The check needs to only focus on whether the complete specification contravenes s18(2) or s18(3).

Examiners should assume that CEG have already checked all other requirements and that any issues have been identified and the appropriate directions sent out. However, where there is an issue which does not appear to have been addressed, CEG should be notified.

Subsection 18(2)

The consideration of s18(2) issues is the same for innovation patents as it is for standard patent applications, that is, human beings and the biological processes for their generation, are not patentable.

Subsection 18(3)

Subsection 18(3) specifically excludes certain subject matter from the scope of an innovation patent. An innovation patent is not permitted for plants and animals, and biological processes for the generation of plants and animals. In particular, this includes:

genetically modified whole plants, plants produced by cross-breeding of one strain with another strain, or selection of a plant from a range of plants;
genetically modified whole animals (including human beings), animals produced by cross-breeding of one strain with another strain, or selection of an animal from a range of animals;
seeds of plants, plant tissue cultures, or any matter that could give rise to a plant; and
animal embryos or foetuses, zygote, or any matter or group of cells that could give rise to an animal.

The intent of the exclusion in the legislation was in part to avoid overlap between innovation patents and Plant Breeder's Rights.

The Plant Breeder's Rights Act 1994 defines “plant” as follows:

"Plant includes all fungi and algae, but does not include bacteria, bacteroids, mycoplasmas, viruses, viroids and bacteriophages."

Consequently, for the purposes of an innovation patent, the meaning of "plant" under s18(3) includes all fungi (including yeasts and moulds) and algae.

However, claims to micro-organisms (including bacteria, protozoans, bacteroids, mycoplasmas, viroids, bacteriophages and viruses per se) are not excluded under s18(3), since they are not considered to be either plants or animals.

Note that processes which use a plant or animal, or part thereof, but which do not result in a plant or animal, are not excluded. For example, the use of rennet to make cheese, or the use of potatoes to make chips, would not be excluded.

Subsection 18(3) does not apply if the invention is a microbiological process, or a product of such a process (as stipulated in s18(4)). Some examples of patentable inventions are:

preparation of cheese, wine making, brewing and industrial processes involving the use of micro-organisms, such as microbial bleaching or leaching of ores using micro-organisms;
the use of enzymes derived from micro-organisms for the preparation of, for example, cheese or detergents comprising protease;
the use of yeast, fungi, or moulds for the production of useful products, for example penicillin, enzymes, fermented meats, or industrial alcohol and the products produced by such use; and
the use of viruses in the preparation of vaccines;

Where examiners have any doubts as to whether an invention is patentable, the matter should be referred to a supervising examiner.

Failure to pass formalities check

Where an application contravenes s18(2) or s18(3), examiners are to issue a direction to the applicant. Where a Formalities 2 direction is issued, examiners must inform CEG.

The applicant has 2 months from the date of the direction to respond, otherwise the application will lapse. However, where the applicant responds within 2 months, the applicant has additional time in which to comply with the direction. Thus, if the formalities objection is not overcome within 4 months from the date of issuing the direction, the application will lapse (reg 3.2B(6)).

Where an innovation patent application fails the formalities check and lapses, the applicant will be advised of the lapsing and the lapsing will be advertised in the Official Journal.

Acceptance and grant

Once an application has passed the formalities check and been indexed, acceptance will normally be carried out by CEG. The only exception to this is where there are amendments to consider before acceptance, and these involve more than just substitution of sheets, as for example, amendments filed in response to a Formalities 2 direction. In this case, the examiner who considers the amendments will have responsibility for accepting the application and must have acceptance delegation.

In most situations, acceptance and grant will occur practically simultaneously, the exception being those cases where there is a prohibition on the publication of the patent.

Following grant, the patent is published for the first time as an A4 level publication.

Note that proposed amendments to the complete specification, other than those proposed in response to a formalities direction, cannot be allowed until after grant (see reg 10.2C(4)). Where an examiner considers that amendments filed prior to acceptance are not allowable, an adverse report should be issued.

Amended Reasons

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

5.6.15.3 Formalities check for Innovation Patents

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