Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Written Decisions

Date Published

Statements of Reasons

Statements of reasons provide transparency in the decision making process and allow the parties affected by the decision the opportunity to exercise their right of appeal or review on an informed basis. Reasons also assist hearing officers in reaching their decision in a careful, diligent and logical manner while identifying principles to guide future decision making.

Statements of reasons should:

  • Be clearly presented, use plain language where possible and apply legal and technical terminology in a consistent and appropriate manner.
  • Clearly set out the relevant background and major issues to be decided.
  • Set out findings on material questions of fact drawn from relevant evidence and particularly explain findings where evidence is conflicting.
  • Give proper consideration to the issues including the submissions made by the parties.
  • Identify and apply current legal precedent and practice.
  • Make the reasoning behind the decision clear and logically support the conclusion reached.

However, it is “not necessary that reasons address every issue raised in proceedings; it is enough that they deal with the substantive issues upon which the decision turns” (Total Marine Services Ptys v Kiely (1995) 51 ALD 635).

Office practice is to generally provide a statement of reasons with all decisions that follow a hearing. In some circumstances, reasons may not be given with the decision, but must be provided within 28 days pursuant to AAT or AD(JR) Acts.

For general guidance on statements of reasons, see the Practical Guidelines for Preparing Statements of Reasons prepared by the Administrative Review Council and Judgement Writing by Rt Hon Sir Harry Gibbs (former Chief Justice of the High Court of Australia) published in The Australian Law Journal, Volume 67 at page 494.

Privacy Considerations

Hearing officers may have to deal with personal information relating to individuals. Personal information is defined as information or opinions, whether true or not, about an individual whose identity is apparent or can be reasonably ascertained. This may include information such as racial or ethnic origin, political opinions, religious beliefs, membership of organisations, sexual preference, criminal record or health information. Personal information only relates to a living natural person and not companies.

When writing decisions, two key principles govern the use of personal information:

  • The personal information is only to be used for a relevant purpose. For example, the presence of a medical condition could be relevant to the failure to do an act in time.
  • The personal information should not be disclosed unless necessary. Maintaining privacy should be balanced with the need to produce a statement of reasons that fully supports the decision. In some circumstances, this may be done by referring to matters in general, for example “a serious medical condition”, without needing to specify the exact condition.

For further guidance, hearing officers should consult the Privacy Officer.

Decision Format

All written decisions must follow a similar format and use the template on the Oppositions and Examination Practice Workbench.  A copy of the Guidelines for Hearings Decisions is also located on the workbench.

The following points should also be noted:

  • The template is broken up into two sections.  The Decision section at the start of the document enables all relevant matters decided to be summarised in one area and also permits the hearing officer to record any directions regarding the application.  The Reasons for Decision section should be broken up into parts using appropriate headings, e.g. Background, Evidence, Specification, Claims Construction, Proposed Amendments, Novelty, Conclusion, Costs etc. This format is particularly helpful for lengthy or complex decisions, but equally useful in short decisions.
  • Care should be taken in referring to the parties to the action. For example, if the patent applicant is Joe Bloggs or PDC Ltd, then references to the applicant should be in the singular (e.g. his/its evidence). If A and B are opposing a patent grant, then they are opponents (plural).
  • The paragraphs in decisions should be consecutively numbered. Hearing officers should take care using paragraph numbers when referring to other parts of the decision, as these references will not be automatically updated if the paragraph numbering is changed (e.g. if another paragraph is inserted).
  • In some circumstances, it may be appropriate to append a drawing from a patent specification to the decision, if it will aid in the understanding of the decision. A suitable reference should be included in the text to the attached drawing. Care should be taken with the electronic formatting, as if the size of attachment is too large, there may be problems uploading it onto the AustLII website (see Publication of Decisions).
  • Reasons should usually be consistent with previous office decisions. If a hearing officer is instigating a change of practice, they should ensure that the Patent Manual of Practice and Procedure is updated and that the change is communicated to examiners, other relevant staff and users of the patent system.

Actions When Decision Completed

Following formal review (see Peer Review), a copy of the final decision must be saved on the G: drive at G:\P&PBR\Secure\PMOG\POH\Documents & drafts\Drafts.  The red decision folder containing a copy of the decision, the opposition file, evidence and any other relevant material should be returned to OEP.

OEP will subsequently arrange issuance of the decision to the parties, publication actions and implementation of any practice changes that flow from the decision.

Parties must not be verbally informed of the decision until it has been given to OEP and is ready to issue.

Amended Reasons

Amended Reason Date Amended
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