5.6.9.1 Conditions and Time for Acceptance

Also in this Chapter:

• 5.6.9.2 Postponement of Acceptance
• 5.6.9.3 Extension of Acceptance Period
• 5.6.9.4 Revocation of acceptance
• 5.6.9.5 Refusal of acceptance - Specific circumstances
• 5.6.9.6 Refusal of an Application;
• 5.6.9.7 Continued Examination - Result of a decision
• 5.6.9.8 Lapsing of an application
• 5.6.9.9 Withdrawal of an application
• 5.6.9.10 Double patenting, Multiple Applications - s62(2), s101B(2)(h)
• 5.6.9.11 Parallel Applications (Applications for both innovation and standard)
• 5.6.9.12 Register of Patents

• 5.9.6.13 Annex A - Example Bar-to-Grant Letter (Accepted Despite Multiple Inventions)

• 5.6.9.14 Acceptance and QRS Issues

Key Legislation:

Patents Act:

• s49 Acceptance of patent request: standard patent
• s49A Postponing acceptance of patent request: standard patent  
• s50 Application or grant may be refused in certain cases  
• s50A Revocation of acceptance  
• s142 Lapsing of applications 
• s222A Doing act when Patent Office reopens after end of period otherwise provided for doing act  

Related Chapters:

• 5.6.1.3 Definitions (Invention, Alleged Invention, Meaning of a Document etc.)
• 5.6.8.18 Other Issues (contrary to law etc)
• 5.6.9.3 Extension of acceptance period
• 5.6.9.4 Revocation of Acceptance
  
• 5.6.9.11 Parallel applications (Applications for both innovation and standard patents)​​​​​​​

On this page

• Introduction
• Misleading, unfair, or derogatory references
• Processes operated outside the jurisdiction of Australian law
• Clear reports
• Time for acceptance.

Introduction

Under s49(1), the Commissioner (or acceptance delegate thereof) must accept a patent request and complete specification where certain requirements are met (that is, a clear report). If s49(1) does not apply, the Commissioner may refuse to accept the request and specification (s49(2)).

"Where it appears manifest that a valid patent could not be granted, the Commissioner not only has the power but is under a duty to reject the application." Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232.

​​​​​​​However, in practice, the Commissioner will not refuse to accept a request and specification until the matter has been considered at a hearing.

Misleading, Unfair, or Derogatory References

An application should not proceed to acceptance while it contains misleading, unfair or derogatory references to another Australian application or patent, or the invention thereof (see Wadham's Application [1910] 27 RPC 172 and Ehrig's Application [1933] 50 RPC 176).

Situations of this kind are rare, since claiming an advantage over the prior art is not in itself objectionable. For example, in the case of a selection, the specification must describe the advantage possessed by the selected members and upon which the selection is based (5.6.5.5 Selections). Similarly, applicants may distinguish their invention from the prior art and no objection should be taken to statements such as "the process of Australian specification ..... gives a yield of .....% while the process of the present invention yields 20% more".  

Where a specification contains misleading, unfair, or derogatory references, the case should be referred through a supervising examiner to the Assistant General Manager (Oppositions) for a determination of any matters to be communicated to the applicant in this regard.

Processes Operated Outside the Jurisdiction of Australian Law

Processes or methods to be used wholly outside the jurisdiction of Australian law raise doubt with regards to whether they could form the subject of an Australian patent. For example, a method of landing on the moon or a communication system using devices extrinsic to Australian airspace ​​​​​​(see Application by Standard Telephones and Cables Pty Ltd [1965] AOJP 2301).

Where a specification is objectionable for this reason, the case should be referred through a supervising examiner to the Assistant General Manager (Oppositions) for a determination of any matters to be communicated to the applicant in this regard.

Clear Reports

​​​​​​​Where the requirements of s49(1) are met (that is, no objections apply and it is a clear report), the Commissioner (or acceptance delegate thereof) must accept the patent request and specification. This applies at both first and further report stages.

During the acceptance process, the "Prepare for acceptance" tab in RIO should be completed by the examining delegate, indicating concurrence with the examining delegate’s report and, where appropriate, granting leave to amend and allowing the amendments. The examining delegate and the acceptance delegate may be the same person. Where the examining delegate and the acceptance delegate are not the same person, the acceptance delegate must be at the senior examiner level or higher.

​​​​​​​Once an application has been formally accepted, that acceptance cannot be reversed other than in exceptional circumstances (see 5.6.9.4 Revocation of acceptance).

Time for Acceptance

​​​​​​​A complete application for a standard patent will lapse if the patent request and complete specification are not accepted within the period prescribed (s142(2)(e)). Regulation 13.4 specifies the relevant period, which for most cases will be a period expiring 12 months from the date of a first examination report. All examination reports must indicate the period of time for acceptance.

Where the time for acceptance expires on a day that the Office is not open for business, then the acceptance may be carried out on the next day that the Office is open for business (see 5.6.1.3 Definitions (Invention, Alleged Invention, Meaning of a Document etc.)). For the purposes of s222A, an acceptance carried out by outposted and home-based examiners is an act done at the Office (that is, in Canberra). However, note that the Melbourne IP Office (MIPO) is not considered a sub-office for the purposes of s222A.

​​​​​​​Consequently, examiners need only have regard to non-business days that apply to the Office in Canberra and not to the local holidays to which they are entitled. For example, for an application which has Melbourne Cup Day as the last day for acceptance, acceptance cannot be validly carried out on the following day by a Melbourne based outposted examiner (or an examiner based at MIPO) unless covered by an extension of time.