Subsection 27(1) enables any person to file a notice asserting that the invention of a complete specification filed in relation to a standard patent application is not a patentable invention due to non-compliance with s18(1)(b), that is, it is not novel and/or inventive. The notice must be filed between the OPI date and 3 months after publication in the Official Journal of acceptance of an application for a standard patent. Notices received before the OPI date are deemed not to have been filed and may not be considered in subsequent proceedings. Wherever practicable, arrangements may be made for the return of any premature notices to the original person.

During examination, examiners are required to consider matters stated in any notice filed prior to acceptance. Where an objection is appropriate based on the matter filed, this is to be included in either a first or further report, depending on when the notice was filed. If a notice is filed after acceptance, it may instead form the basis of a pre-grant re-examination. Section 27 is not intended to be an informal type of opposition proceedings before examiners, and there is no provision in either the Act or Regulations for argument or filing of counter-evidence.

Under s28, a person may file a notice asserting that an innovation patent is invalid. The following considerations similarly apply to s.28 notices.

Filing of Notice

Notices may be sent to the Commissioner by mail or filed electronically via eServices (using the General eService Request form for Patents). Alternatively, the application of interest can be viewed on AusPat and the “Submission of Relevant material (S27, S28)” link at the bottom of the page can be clicked, followed by the “Make a S27/28 Submission” link.

It is the responsibility of the person filing a notice under s27(1) to ensure the correctness of the content of the statement or any other accompanying documents. Notices are not subject to examination and, pursuant to s27(2), the Commissioner will inform the applicant of any matter to which the notice relates without any verification of that matter. There is no limitation on the number of notices under s27(1) which may be filed by the same person, or persons.

Notices filed pursuant to s27(1) are inspected by CEG to ensure that they are properly filed. The inspection is of the notice only and does not extend to any attachments. Notices duly filed before commencement of examination are added to the case file under the document name ‘Notices under subsection 27(1)’.

Any notice filed after acceptance will be drawn to the attention of the supervising examiner of the relevant section who will consider, in conjunction with Patent Oppositions, whether re-examination of the application should be carried out. This consideration should not be undertaken until after the deadline for filing s27(1) notices has expired, to ensure that all material filed up to that time is taken into consideration in a consolidated process.

Any purported notice under s27(1) which is received out of time is to be referred to the Assistant General Manager (Oppositions).

Notice Requirements

The notice must contain:

a full identification of the application to which the notice relates;
reasons why the validity of any patent issued on the application would be affected under s18(1)(b); and
a copy of any document referred to in the reasons, or a reference or URL link to the document.

If the published document is not a patent, the notice must also be accompanied by evidence establishing where and when that document was published (if this is not apparent from the document itself).

If a document is not in English (whether patent or non-patent), a translation must be provided. (For translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided). Any documents accompanying the notice are OPI.

Action By Examiner

Examiners should consider the contents of any notices under s27(1) before formulating their examination reports.

Every published document referred to in the notice should be considered, to the extent practicable. This is notwithstanding any failure to meet the requirements referred to above, for example the provision of a translation.

If the assertion made in the notice is such as to affect the validity of any patent (if issued), and examiners consider that assertion to be supported by the documents referred to in the notice, an appropriate objection is to be included in either the first or further report, depending on when the notice is filed.

Examiners may consider matter published in documents (including books, patent specifications, periodicals and similar publications). Matter made publicly available through prior use or by oral communication may also be considered. This includes declarations by persons allegedly having seen or used the invention, or alleged actual samples of the invention, or statements that the invention may be inspected or publicly seen.

Publication Date

Before citing a document accompanying a notice under s27(1), examiners must be satisfied that the document was in fact published before the relevant priority date. Provided the date of publication is clearly and unambiguously given, examiners are entitled to consider the matter.

Legal Principles and relevant case law

In Roberts Mfg. Inc.'s Application [1977] AOJP 2345, a declaration stating that certain brochures were available "early in January 1972", together with other evidence which failed to specify exact dates, was held to be insufficient to establish publication before the priority date of 14^th February 1972. At page 2346 it was stated that:

"In view of the fact that the priority date is ... (close to the date of alleged publication) ... a more accurate indication of the date when any person may have received such a brochure by post, or otherwise, appears to me to be essential in order to establish publication for the purposes of taking a definite objection under section 48(3)."

Incorrect Translation of Documents

Where a document accompanying a s27 notice is not in English, the person filing the notice is required to provide a translation.

Where examiners have any doubts about the accuracy of the translation of a document, they should first consult Oppositions. If Oppositions agree, then the person who filed the notice should be requested to file either:

a corrected translation of the document and a certificate of verification for the corrected translation; or
a certificate of verification for the translation.

Examiners should contact CEG (via email to era@ipaustralia.gov.au) with a request that a corrected translation and/or certificate of verification be obtained from the person who filed the notice under the provisions of reg 22.15A. Examiners should clearly identify the relevant document(s) in their request. CEG will issue a notification to the person and allow them a 2-month period to respond.

Examiners should, in the meantime, issue the examination report. Where the corrected or verified translation has not been received prior to issuing an examination report, examiners should, following consultation with Oppositions, include an additional comment in the introductory paragraph of the report as follows:

“Note: A section 27 notice has been filed in respect of this application. The notice is accompanied by a translation of a document. The person who filed the notice has been requested to provide a corrected translation of the document and a certificate of verification for the corrected translation, or a certificate of verification for the translation of the document, under regulation 22.15A.

Following receipt of the corrected/verified translation, the final date for acceptance of this application may change under regulation 13.4(1)(c) or regulation 13.4(1)(l).”

As a novelty or inventive step objection may be raised based on the corrected/verified translation once received, it is possible that the final date for acceptance may extend beyond the 12-month period that usually applies. In this situation examiners should follow the procedures outlined in 5.6.9.3 Extension of Acceptance Period.

Notices Received After Issue of Adverse Report

Notices received after an adverse report has been issued are added to the case file, but are not referred to the relevant examination section until a response is received to the previous report. Any objections based on such notices must be raised in the next adverse report that issues. Where a novelty or inventive step objection is taken for the first time as a consequence of a filed s27 notice, the applicant has 3 months from the date of the adverse report to respond, regardless of whether that 3-month period extends beyond the 12-month period for acceptance (reg 13.4(1)(l)(i)). In this situation, examiners should follow the procedures outlined in 5.6.9.3 Extension of Acceptance Period for extending the period for acceptance.

Amended Reasons

Amended Reason	Date Amended
Incorrect link to 5.6.9.2 changed to 5.6.9.3	09 Jul 2024
	18 Oct 2023
Published for testing	06 Jun 2023

5.6.4.5 Third Party Notifications

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Overview