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7.2.8.4 Patent Applications under Sections 33 to 36

Date Published

Key Legislation:​​​​​​​

Patents Act:

  • s33 Applications by opponents etc. 
  • s34 Applications by eligible persons arising out of Court proceedings  
  • s35 Applications by eligible persons following revocation by Commissioner  
  • s36 Other applications by eligible persons  

Patents Regulations:

  • reg 3.8 Time within which applications are to be made following certain decisions and declarations
  • reg 3.13 Priority date for application by person declared under section 36 of the Act
  • reg 6.3 Date of patent​​​​​​​

Note: This information applies to patent applications made for sections 33, 34, 35, and 36 on or after 15 April 2013.

Sections 33 to 36 enable a person who has been determined to be an eligible person to make a complete application which maintains the priority date of the other application or patent.  Reg 3.8 requires that application to be made within 3 months of the relevant decision or declaration referred to in the relevant one of those sections.

Where a new application has been made pursuant to section 33, 34 or 35 for the whole (or part) of the subject matter of an application or patent on which the determination was made, it is not necessary for that new application to be examined, and advertised accepted as per normal procedures - this has already been done in respect of the subject matter insofar as it appeared in the original application.  It is essential, however, that the new application be drafted in terms corresponding to those of the original application or patent, subject to the decision of the delegate of the Commissioner or the Court - this means that the new application should be identically worded to corresponding parts of the original, or should represent the original in an amended form which meets the terms of the decision.

See e.g. Massey v Noack 11 IPR 632, (1988) AIPC 90-505.

This, of course, excludes the possibility of inclusion of "new matter" in the new application, and limits the scope of the new claims to falling within the scope of the claims of the original application, unless the decision requires otherwise, e.g. on the basis that a relevant original claim did not define the invention.

Once the new application is lodged, and the above conditions are met, the delegate may direct the application be granted, subject to any appeal on the decision.  However, if appropriate, the Commissioner may direct re-examination of the application.

Applications made pursuant to a declaration under section 36 are not treated any differently to other applications excepting in relation to priority dates as provided by section 36(4) and the date of the patent if granted.

 

Patent Term

The term of the new patent generally runs from the date of the patent of the original application or patent.  See reg 6.3.

It should also be noted that an action for infringement only lies from the date of publication of the new patent. The "rectified grantee" acquires rights in respect of infringement only prospectively. GS Technology Pty Ltd v Elster Metering Pty Ltd [2008] FCA 17 at [78] to [79]

If an original patent has been extended the extension of term does not flow on to the new patent.

 

 

Priority dates

For section 33, 34 and 35 the priority date of a claim in a patent granted on the new application is the same as the priority date of the relevant claim or claims in the original application or patent.

The priority date for a claim in a patent application filed pursuant to section 36 is determined under reg 3.13.

 

 

Application requirements for sections 33, 34 or 35.

A person seeking to invoke section 33, 34 or 35 must file with the Commissioner a new application containing:

  • patent request form
  • specification
  • request for publication (optional)
  • filing fee

and a clear indication that section 33, 34 or 35 is invoked.

The new filing is processed normally, and is advertised.  The date of filing given to the new application is the actual filing date, and no priority details are recorded at this time.

OEP will arrange for an Examiner to check that the specification of the new application is the same as that of the original, and that the new application is in order for grant (e.g. the patent request is in order).  OEP will then prepare a notice including the relevant declaration to be signed by the Deputy Commissioner (OEP).  CEG will then grant the new patent.  A copy of the notice and declaration will be placed in the file of the new patent.

CEG will then change the following data in relation to the new patent (on the advice of OEP):

  • The date of the patent calculated according to reg 6.3.
  • The anniversary on which fees are due is the same as that applying to the original application/patent.  The next fee due is the same as the next continuation/renewal that would have applied to the original application/patent.   
  • The priority date of the patent is the same as that of the original application/patent

The filing date of the new patent is not altered.

CEG will then write to the patentee advising them that the patent has been granted, the date of the patent, and the date that the next renewal fee will be due.

 

Amended Reasons

Amended Reason Date Amended
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