8.6.1 Grounds of Examination

Also in this Chapter:

• 8.6.2 Innovative Step

Key Legislation:

Patents Act:

• s18 Patentable inventions
• s40 Specifications
• s50 Application or grant may be refused in certain cases
• s64 Grant: multiple applications

Related Chapters:

• 2.18.3.1 Application for a Standard Patent
• 2.18.3.2 Innovation Patent
• 2.13.5 Stringency of Tests During Examination

On this page

• Overview
• Private Applicant Cases

Overview

The grounds of revocation of an innovation patent for invalidity are as follows:

1. the patent does not comply with s40;

2. the patent does not comply with s18(1A)(a) or s18(1A)(b);

3. the patent does not comply with s18(2) or s18(3);  

4. use of the invention is contrary to law;

5. the invention is a food or medicine containing a mere admixture of known ingredients;  

6. the invention is a process producing a food or medicine through mere admixture of known ingredients;  

7. the patent contains a claim that includes the name of a person as the name or part of the name of an invention;  

8. the patent claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor where the relevant claims of each patent have the same priority date; and

9. the patent does not comply with other matters prescribed in the Regulations.

Note:  Examiners are not to object to the lack of a notice of entitlement.  Entitlement is not a ground of examination (although it is ground of opposition) and there is no requirement for a notice to be filed.  (Statements regarding entitlement are included in the patent request).

The consideration of these grounds is substantially the same as the consideration of the corresponding grounds of examination for standard patent applications.  It should be noted that the grounds of examination for standard patent applications which are equivalent to:

• grounds (4), (5), (6) and (7) referred to above are contained in sec 50; and  
• ground (8) is contained in s64(2) (see 2.18.3.1 Application for a Standard Patent and 2.18.3.2 Innovation Patent).  

In considering the grounds of revocation, the Commissioner must be “satisfied” that the criteria for novelty and innovative step are met.  For all other grounds of revocation, the Act requires that the Commissioner “considers” that a ground for revocation has not been made out (see 2.13.5 Stringency of Tests During Examination).

Private Applicant Cases

In the case of private applicants, examiners must include the following text at the end of any adverse examination report:

“You must pay annual renewal fees by when they are due or your patent will cease. Please note that you will not be notified by the Office of any due dates for the payment of fees. You will need to keep track of this yourself. For innovation patents, the first of these fees is usually due two years from the filing date, however depending on the circumstances of your application, another date may apply. Information about the fees that you will need to pay and when they will be due may be obtained by phoning 1300 651010.”

[See PERP code R71]