7.15.3 Existing computerised decisions

Also in this Chapter:

• 7.15.1 Power to Make Computerised Decisions
• 7.15.2 Substituting Computerised Decisions​​​​​​​

Key Legislation:

Patents Regulations:

• reg 3.16 Prescribed grounds and period for examination

At present the only computerised decision is directing examination.

Directions issued under the public interest power in reg 3.16(1)(b) use advanced machine learning to prioritise directions to applications based on the objective readiness of an applicant. Data input used by the program includes:

• The receiving office for the application before entering in Australia
• IPC classification
• IP Australia examination
• Number of inventors on the application
• Applicant as an entity
• If the application is a WO application, percentage of granted patents associated with the WO application
• If the application is a WO application, the number of X and Y category citations identified in the International Search report.

It is noted that, while claims analysis and X and Y documents in Foreign Exam Reports could be relevant to the decision, these are not considered by the program in its initial form.

A system malfunction may be identified during internal checking. Also, inputs used to determine the probability of ‘readiness’ should be accessible to the applicant; either up front, or upon request, so an applicant may be able to identify a malfunction caused by incorrect inputs.

When considering substitution of a decision to direct examination, Patent Oppositions will take into account any evidence that the applicant, objectively or subjectively, was not ready for examination.