Watermark

Effective from 22 October 2007, the Australian Patents Regulations have been amended such that patent applicants are no longer required to disclose the results of documentary searches carried out by foreign patent offices, in relation to corresponding applications.  This will significantly reduce the burden on those applying for patents in Australia, and eliminate the difficulty (and expense) that many applicants have experienced in complying with the Australian disclosure regime.

Importantly, however, the changes are not retrospective.  Thus, applicants are still under an obligation to provide any search results which had a final due date for disclosure prior to 22 October 2007, at which time the former regulations were still in effect.  Since any such disclosure is, by definition, now overdue, it would also be necessary to ascertain whether it is possible to obtain an extension of time to file the outstanding search results.

Initially, the Act provided that the Commissioner may direct the applicant to disclose the results of searches conducted by specified foreign patent offices.  Under changes implemented by the Patents Amendment Act 2001, a continuous reporting regime was introduced, whereby it was necessary to disclose the results of all relevant searches conducted not only by foreign patent offices, but also by (or on behalf of) the applicant.  However, this was soon deemed to be an excessively onerous requirement, and the Intellectual Property Laws Amendment Act 2003 (and corresponding amendments to the Patents Regulations) limited the obligation to the disclosure of prescribed search results issued by foreign patent offices.

Many major patent offices, including the US Patent and Trademarks Office (USPTO), the European Patent Office (EPO), and the Japanese Patent Office (JPO) now publish search and examination reports on the Internet, and Australian patent examiners have increasingly been making use of such reports in the examination of corresponding Australian applications.  Indeed, the identification and use of relevant Foreign Examination Reports (FER’s) by Australian examiners is now part of the standard examination procedure.  In this context, the value of mandatory disclosure of search results by applicants in achieving the policy objective of improving the quality of examination and strengthening the validity of granted patents has been substantially reduced.  The Patent Office now considers that its examiners have access to more information via the Internet, in a timely manner, than they do as a result of disclosure by applicants.  At the same time, the disclosure obligation has placed a significant burden upon applicants.   With the notable exception of the USPTO, most other jurisdictions have substantially less onerous, or no, search result disclosure obligations.

Watermark has carefully reviewed the changes to the regulations, and in particular the impact of their non-retrospective effect, and will be advising affected applicants on a case-by-case basis.  In general, however, foreign search results issued after 22 April 2007 will not need to be disclosed in relation to a corresponding Australian standard patent application, while results issued after 22 July 2007 will not require disclosure in relation to a corresponding innovation patent.  Clients with concerns in relation to undisclosed search results issued prior to these dates are encouraged to contact one of our attorneys in order to obtain more specific advice.

Follow this link to the Official Notice regarding the amendments to the Patents Regulations.

Mark Summerfield