7.13.2 Inspection of non-OPI documents

Also in this Chapter:

• 7.13.1 Documents not-OPI by direction of the Commissioner - Regulation 4.3(2)(b)

Key Legislation:

Patents Act:

• s56 Certain documents and information not to be published or open to public inspection  
• s223 Extensions of time  
• s224 Review of decisions  

Patents Regulations:

• reg 4.3 Prescribed documents: public inspection

Note: This information applies on or after 15 April 2013 to documents filed before, on or after that date.

In this topic:

Introduction

When is access granted?

Who access is granted to?

Place for inspection

Appeal

Introduction

The Commissioner may order inspection of non-OPI documents under section 56(1)(b) of the Act.  This is most likely to occur in relation to:

• ownership disputes;
• sec 223 requests; and
• where production of documents has been ordered by the Commissioner.

Where a request is made for inspection of a document that is not OPI (whether by virtue of reg 4.3(2)(b) or otherwise), the person making the request, and any person having an interest in the documents concerned, may be entitled to be heard by the Commissioner. Thus any requests under sec 56(1)(b) must be forwarded to the Supervising Examiner Patent Oppositions or Deputy Commissioner in OEP.

When is access granted?

An order for inspection is an exception to the fundamental rule requiring that documents not be published or available for inspection if they are not made OPI under the Act and Regulations.  Inspection will however be allowed where it is appropriate, taking into account the interests of the relevant parties and the public interest.  Most often this will be where the ability of a party to take some action under the Act, for example to oppose the grant of patent or extension of time, is significantly limited unless they are given access to documents that have been put before the Commissioner.

However, even then, the Commissioner will invariably impose conditions intended to maintain confidentiality in the information to the maximum extent possible.  These will include requiring undertakings of confidentiality and restrictions on the persons who may inspect the documents.  In appropriate cases it may also include providing inspection of documents from which sensitive information has been redacted.

Who access is granted to?

Where there is a justification for granting access to unpublished documents, the general rule is that they can be made available to a person's legal representative on the making of appropriate undertakings regarding confidentiality.  However the appropriateness of this must be assessed on the merits of each individual case.

Inspection will usually be limited to a party’s legal representative or an employee of the legal representative or an independent third party expert.  In certain circumstances, such as ownership disputes, the other party would be granted restricted access if it could be shown that access was essential in the interests of justice and there would be no breach of duty of confidentiality.  (See Davies v Eli Lilly & Co. (1987) 1 All ER 801)

Of course, if the parties can mutually agree to access, documents can be exchanged outside the Patents Act without involving the Commissioner.  

In cases of disputed entitlement where inspection cannot be agreed, it may be appropriate to follow the process adopted in Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088:

• the person seeking access provides the Commissioner with a statement of what they allege their invention to be;
• a patent examiner (or other agreed third party) compares the statement of the alleged invention with the disclosure of the specification, and reports whether the alleged invention was disclosed in the unpublished specification;
• upon appropriate undertakings as regard confidentiality being made, the report is given to the person seeking access (or their legal representatives).

This approach was also followed in Impact Post Anchors v Vincent Charles Carsburg [1999] APO 15.

Place for inspection

Inspection normally occurs at IP Australia’s premises in Canberra under the supervision of an IP Australia staff member.

Appeal

A decision made by the Commissioner under section 56(1)(b) to order or not order inspection of a document is reviewable by the AAT under section 224(1)(a).