The following terms, as used throughout this manual, have the meanings as defined below. The content should be read in conjunction with, as appropriate, the Dictionary provided at Schedule 1 to the Patents Act 1990, and the IP Australia Corporate Glossary.

Application

Volume 1:

In relation to the Patent Cooperation Treaty (PCT) and when used in Volume 1 generally, without further qualification, this term should be interpreted as referring to an International Application (IA) under the provisions of the PCT.

Volume 2:

In general and without further qualification, and when used in Volume 2 generally , this term refers to an application for a standard patent, which depending on the context may mean an Australian national application under the Patents Act 1990, or a national phase application based on a PCT application. Where the section concerned refers to innovation patents, the term may be interpreted as referring to an Innovation Patent Application. Insofar as it is directed to PAMS, a similar definition should be applied when referring to Volume 5.

Volume 6:

Being directed to both National and International examination, this term, when used in Volume 6 should be interpreted in the light of the topic to which the section relates.

Note: In certain contexts, particularly in relation to Volume 4, the term may refer to applications relating to the operation of the patent system in a more general sense or may specifically refer to an application relating to a specific request e.g. an application for extension of time under sec 223. In such circumstances the meaning should be attributed based on the topic to which the section relates.

Case

The term should be understood broadly. It may refer to an application or a granted patent depending on the context.

However, when used in reference to decided legal precedent it should be understood as referring to a “legal case”.

Casefile

A 'casefile' should be understood as referring to a collection of documents, in either paper or electronic form, which together broadly describe the prosecution of a patent application. It will include copies of the specification at various points in time including amendments, as well as examination reports and responses, and all correspondence. As such, the casefile may include matter that is open to public inspection and matter that is not open to public inspection.

In reference to Volume 1, the casefile will include the corresponding documents associated with the processing of an International Application (IA).

‘corro’

An abbreviation for Correspondence. This term is used to refer generally to all forms of correspondence e.g. reports, letters, reminders etc. It is also routinely used as part of a label for specific functions of software used by IP Australia (e.g. “Create Corro”).

Examiner

Without qualification, this term refers to a person employed in IP Australia who has been granted a delegation from the Commissioner of Patents to examine national and/or international applications for the purposes of determining their compliance with the Australian Patents Act or the Patent Cooperation Treaty respectively, or any other similar delegated authority in relation to other bilateral or multilateral treaty or agreement administered by IP Australia.

In the context of Australian Patent examiners, when used without qualification, the term should be broadly understood to include both those who have been granted the Commissioner’s delegation to accept Australian patent applications and those who have not.

‘invitation-to-pay’ (ITP)

An invitation-to-pay is a communication sent to a customer or their agent to inform them of a fee whose payment is required for ongoing processing of the application or service requested from IP Australia. Some such fees are for specific services e.g. examination fee, while others are regular fees requiring periodic payment e.g. continuation fee.

may / can / could

The term ‘may’ (and the synonyms indicated at left) places upon the examiner to whom it applies, the obligation to carry out one or more of the specified optional duties / activities to the extent dictated by personal judgement. No requirement for consultation is implied and there is no mandatory obligation to carry out any of the specified duties / activities.

Similar definitions apply where the term is used in the negative, e.g. preceded by ‘not’.

must / is to / will

The term ‘must’ (and the synonyms indicated above) places upon the examiner to whom it applies the mandatory obligation to carry out the specified duty / activity. No latitude exists in this term for the exercise of personal judgement. No separate documentary evidence is required to establish that the mandatory task has been carried out unless specifically prescribed.

Similar definitions apply where the term is used in the negative, e.g. preceded by ‘not’.

Patent

In general and without further qualification, this term refers to an application for a patent, either a standard or innovation patent, under the Patents Act 1990. A specific meaning differentiating between these should be attributed based on the context.

Similarly, where the context dictates, the reference should be taken as referring to non-Australian patents.

shall

The meaning attributable to the word ‘shall’ where it appears in this manual, is to be determined based on the context.

Note: The confusion created by the word ‘shall’ is well known. Despite ‘shall’ persisting in some legislation and in the PCT, it has been the basis of much litigation and many jurisdictions have commented that "shall" is confusing because it can and has been interpreted to variously mean "may, will or must." The Australian Patents Act 1990 does not use the word, restricting itself to ‘must’ and ‘may’."

Similar considerations apply where the term is used in the negative, e.g. preceded by ‘not’.

should / must consider / is recommended to

The term ‘should’ (and the synonyms indicated above) places before the examiner to whom it applies, one or more optional activities recommended in the majority of cases, to which he or she is encouraged to give serious consideration. The determination as to whether or not to carry out the specified activity/ies rests with the examiner, based on personal judgement and advice/consultation sought at the discretion of the examiner. Other than a requirement for serious consideration of the specified activity, there is no mandatory obligation implied by the use of this term. No documentary evidence of the consideration is required unless specifically prescribed.

Similar definitions apply where the term is used in the negative, e.g. preceded by ‘not’.