Australian patent practice – removal of onus to file search results

Date: 2007-10-22

Until today, an applicant for a standard Australian patent was required to lodge search results arising from foreign patent office search and examination. The requirement applied to cases undergoing ordinary examination and applied to all search results that were completed prior to the grant of the patent.  This requirement has been effectively removed by amendments to the Patents Regulations which came into force today, 22 October 2007.

The amendments were only announced last Wednesday 17 October 2007. The Australian Patent Office has made the change because its examiners can now readily obtain relevant search and examination reports online.

Search results need no longer be filed for all pending standard applications and applications which were advertised for acceptance (allowance) on or after 22 July 2007.

For cases which were advertised for acceptance before 22 July 2007, the requirement still applies if the foreign search was completed before 22 April 2007. Such search results were due to be filed within six months from completion of the search and it will be apparent that they are now overdue. Any overdue search results will need to be accompanied with a request for an extension of time.

The removal of the onus to file search results also applies to innovation patents. Further details of the transitional provisions are available on request.

The Australian Patents Act 1990 also provides a mechanism for any person to notify the Commissioner of Patents of relevant prior art affecting the validity of a patent application. The time period has been extended to run from the day the application becomes open to public inspection to three months after advertisement of acceptance (allowance).

This article was written by Tracey Hendy, Senior Associate, Melbourne.