26 October 2007

Early Patent Enforcement and Ex Parte Invalidation in Australia

IPtoday has kindly published an article I wrote on how the Australian patent system can be
worked to bypass the interminable prosecution delays. The article also
explains how you can at least narrow down the scope of a published
Australian patent application.

Read it here: http://www.iptoday.com/articles/2007-10-eagar.asp

19 October 2007

Australia Removes Disclosure Requirements for Patent Applications

I am pleased to report that we have seen the light...

On 17 October 2007, the Governor General made Regulations commencing on 22
October 2007, terminating the disclosure requirements in Australia.

The relevant Regulation will read as follows:
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"If:

(a) under subsection 45 (3) of the Act, an applicant was required
to inform the Commissioner of the result of a documentary search by or
on behalf of a foreign patent office in relation to a patent request;
and

(b) the applicant did not inform the Commissioner of the result
before 22 October 2007; and

(c) the latest of the following dates had not occurred before 22
October 2007:

(i) the day 6 months after the documentary search is completed
within the meaning of regulation 1.3A;

(ii) the day 6 months after the applicant asked for the examination
in accordance with section 44 of the Act;

(iii) if the patent request and complete specification relating to
the application were accepted (whether before or after 22 October
2007) ― the day 3 months after the notice of acceptance was published
in the Official Journal under paragraph 49 (5) (b) of the Act;

the documentary search is prescribed (so that information need not be
given to the Commissioner).

(3) If:

(a) an applicant asked, in accordance with section 44 of the Act,
for an examination of the patent request and complete specification
relating to the application for a standard patent; and

(b) the applicant asked for the examination on or after 22 October 2007;

all documentary searches by, or on behalf of, a foreign patent office
are prescribed (so that information need not be given to the
Commissioner)."

************************************************

My take of this is that if you have not yet filed search results and
are under an obligation to do so, ie, they have become available to
you, you just need to go through (c) (i) to (iii) to see if the
latest date is not after October 22.

So, if you have search results that you received more than six months
before October 22, but have filed an RFE less than six months before
October 22, those don't have to be submitted ((ii) is later than (i)
and (iii) doesn't apply).

It would appear that if an RFE has not been filed, then information
need not be supplied ((ii) is later than (i)). I think you have to
consider that (ii) would be later than (i) even though (ii) does not
have a starting point. Otherwise, the drafters would have used "if" as
they did in (iii).

Where (i) would kick in is where an RFE had been filed more than 6
months ago and then search results were made available to you. If it
then looks like 6 months from the day on which those search results
were made available will pass before October 22, then it will be
compulsory to submit the search results.

I hope that helps. If I receive any interpretative snippets, I will be
sure to let you know.