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5.6.9.9 Withdrawal of an application

Date Published

Key Legislation:

Patents Act:

  • s54 Notice of publication  
  • s79B Divisional applications prior to grant of patent  
  • s79C Divisional applications for innovation patents may be made after grant of an innovation patent  
  • s104 Amendments by applicants and patentees  
  • s141 Withdrawal of applications
  • s223(9) Extensions of time  

Patents Regulations:

  • reg 13.1A Period in which standard patent applications may not be withdrawn
  • reg 22.21 Protection or compensation of certain persons

 PCT and International Conventions:

Related Chapters:

  • 3.5.3 Providing advice to applicants and third parties see requests for information non-OPI material 

Withdrawal Opportunity and Effect

An applicant may withdraw an application under s141 at any time before grant, except for the 3-week period prior to the due date on which a notice is to be published in the Official Journal that the application is OPI, or the 3-week period prior to the due date for acceptance to be advertised in the Official Journal. If the request is filed during the prescribed period, that notice is of no effect, and the applicant should be advised as follows:

"I refer to your request to withdraw this application, which was filed on xxxxx. I advise that the date of filing your request was within a period prescribed by regulation 13.1A(1), and accordingly is of no effect. If you wish the application to be withdrawn, you will need to file a new request after the prescribed period has expired."

A request for withdrawal must be in writing and signed by the applicant. There is no approval process for a withdrawal and the withdrawal is effective on the date the request is received. A notice of the withdrawal is published in the Official Journal.

While it is possible to withdraw a lapsed application, it is unusual to do so. Rather, an application to withdraw a lapsed application may be an indication that the applicant has identified the wrong application (see Reversing Withdrawal of an Application below). Unless the request notes that the application is lapsed, and despite this they request withdrawal, the applicant should be asked to confirm that they wish to withdraw the application despite it being lapsed. If confirmation is received, the withdrawal will be processed.

Note that special considerations apply where the applicant wishes to withdraw an application that has been opposed under s59. In particular, the consent of the Commissioner is required.

Effect of Withdrawal

The effect of a withdrawal is to stop any further processing of the application, however documents on the case file remain in the Office. Withdrawal of an application also means:

  • the application will not be OPI if it has not been advertised under s54;

  • the applicant of a withdrawn application may be entitled to at least a part refund of fees in an amount which will depend on the circumstances of the particular case;

  • the application cannot be used as a citation in a "whole of contents" novelty objection if it is withdrawn before it has been advertised under s54;

  • the application cannot be used as the parent of a divisional application under s79B or s79C filed after the date of the withdrawal; and

  • any requests for amendment under s104 involving the application cannot be processed further.

Generally, withdrawal of an application is final, and a notice cannot itself be withdrawn or the withdrawal reversed. However, in very limited circumstances a request to withdraw an application may be considered to have no effect and reversed, see Reversing Withdrawal of an Application below.

Examiners should check the contents of the case prior to issuing any report. In particular, examiners should check the correspondence to see whether it contains an applicant's written notice of withdrawal.

The Request for Withdrawal

An application may only be withdrawn following a request in writing signed by the applicant or each joint applicant. There is no prescribed form and no fee is payable. A letter from the patent attorney nominated in the address for service stating that the application is withdrawn, or requesting its withdrawal, is sufficient. However, the patent attorney must sign the letter. The name of the firm of patent attorneys is not sufficient.

A person signing a request to withdraw an application must ensure that they have the authority to do so. This is particularly important where there are multiple applicants.

Reversing Withdrawal of an Application

In general, withdrawal of a patent application cannot be reversed. This is intended to promote public certainty around the status of patent rights and give effect to Article 4 C(4) of the Paris Convention which permits certain patent applications to be disregarded for the purpose of that Article only if, at the relevant time, the application has been withdrawn, abandoned, or refused without having been laid open to public inspection (OPI) and without leaving any rights outstanding. Given the serious consequences of withdrawal, the Act requires a notice of withdrawal to be signed by the applicant and, by extension, each applicant where there is more than one.

There are no statutory provisions allowing withdrawal to be reversed, however there are two circumstances where the Commissioner may consider a notice of withdrawal to have no effect:

  1. It is apparent, on the face of the notice or on the basis of information available to the Commissioner, that the person or persons who signed the request were not the applicants and did not have an express or implied authority from the applicants to make the request.

An example of this is where a patent attorney files a notice, but it is subsequently found that the attorney only had the authority to act for one of a number of joint applicants.

2. The notice of withdrawal results from a clerical error, that is, an error that arises in the mechanical process of writing or transcribing, or where a person misreads or misunderstands instructions and transcribes or writes the instruction as misread or misunderstood.

Examples of this type of error include where the notice includes the wrong application number or where instructions to an attorney or clerical assistant are misunderstood as a request to withdraw the application.

A withdrawal cannot be reversed in other circumstances even if the decision to request withdrawal was based on an erroneous belief or error in judgement by the applicant or their attorney.

Where a notice of withdrawal is invalid on its face and should not have been processed by the Commissioner, withdrawal will be immediately reversed. In other cases, the Commissioner may not reverse the withdrawal if the applicant does not act promptly to notify the Office of the relevant circumstances. The Commissioner may alternatively require steps be taken to protect third party interests, for example, publication of a notice of the proposed reversal with the opportunity for third parties to be heard (see AMP Inc's Application [1978] AOJP 2335). This recognises the potential impact on third parties who may have acted on the basis of the withdrawal and that there are no 'protection and compensation provisions' similar to those provided by s223(9) and reg 22.21.

PCT Application

A PCT application is treated as having been withdrawn if Article 11(3) of the PCT ceases to have effect because an applicant has withdrawn their PCT application or the designation of Australia.  ​​​​​​​

Stated Disinterest in Proceeding with the Application

A letter from an applicant or its patent attorney stating that an application will not be further processed, or that the applicant no longer intends to proceed with the application, is not a proper request to withdraw the application. 

Where the Office receives such a letter, the application will remain in force until it lapses, for example through the failure to pay a continuation fee. Until the application lapses, miscellaneous official actions not requiring any prescribed fee, such as publication under s54(3), the issue of a further report where amendments have been filed or acceptance where a clear report has been issued will continue to take place.

However, examiners should not issue a first examination report on such cases or issue a first report pursuant to a voluntary request to amend under s104, before the continuation fee becomes due even though a request for examination or a s104 request to amend has been filed. Instead, the supervising examiner is to write to the applicant, acknowledging receipt of the letter and stating that no action will be taken in relation to the examination or amendment request unless and until the continuation fee is paid. If the continuation fee is paid on or before it is due, normal processing of the application is resumed, otherwise the application will lapse.

Indexing if Withdrawn After OPI

An application withdrawn after it becomes OPI should be fully indexed as it forms a normal part of the search records of the Office.

Where an application is withdrawn before publication, it can be searched using the Automated Preliminary Search Tool. Non-OPI cases in RIO are tagged with a red "NO". Detailed bibliographic data and documents will also not be available on AusPat or eDossier, or sent to external databases, for example, EPOQUE.

Amendments Proposed After Withdrawn

Where amendments are proposed under s104 in respect of a withdrawn application, the matter should be referred to the supervising examiner who will then communicate the facts of the case to the applicant.

Related Applications

The withdrawal of an application does not result in the withdrawal of any related applications for patents of addition that are made before the date of withdrawal. The application for the patent of addition may be examined (as an independent application), provided a request for examination is filed and the patent request form is appropriately amended in due course. The applicant is also entitled to amend the application for the patent of addition under s104 before filing the request for examination.

Amended Reasons

Amended Reason Date Amended

Published for testing
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