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Client Update: Australian duty of disclosure requirements abolished

23 October 2007

In brief: Changes to the duty of disclosure obligations for applicants and patentees of Australian patents have now been implemented. The requirement to inform the Australian Patent Office of the result of prior art searches conducted by overseas patent offices has now been substantially abolished. Partner Chris Bird and Patent Attorney Anthony Selleck report.

The new regulations

Recently promulgated regulations, issued under the Australian Patents Act 1990 (Cth), came into force on 22 October 2007. The regulations substantially abolish the requirement for applicants and patentees to file at the Australian Patent Office the results of documentary searches conducted by, or on behalf of, foreign patent offices. This is a very positive development for applicants and patentees of Australian patents (including innovation patents), who will be freed from what is seen as a significant administrative burden.

The amendments are a recognition by the Australian Patent Office that foreign patent office search results are generally freely available for consideration by Australian examiners via the Internet.

A word of warning

It is important to note, however, that the regulations have not been made retrospective, meaning that any search results that were due to be filed before 22 October 2007 must still be lodged with the Australian Patent Office. In other words, the amending legislation does not excuse any past failure to comply with the disclosure obligations.

In order to discharge the obligation to file such overdue search results, applicants and patentees will be required to seek extensions of time on the grounds of a genuine error or omission, and to pay the applicable government fees.

Under the former regulations, for standard patent applications, the time limit (by which search results were required to be notified) was the latest of:

  • six months after the search was completed;
  • six months after examination was requested; or
  • three months after the advertisement of acceptance (upon payment of monthly extension fees).

For innovation patent applications, the time limits in force were somewhat stricter.

The penalties for non-compliance with the duty of disclosure – namely a prohibition on future patent amendments to distinguish over prior art that should have been disclosed – will continue to apply for all search results that were not duly filed. We therefore recommend that you conduct a review of all Australian cases in your portfolio, to determine whether there are any search results that were due to be filed before 22 October 2007, and instruct us to file such results and apply for relevant extensions of time.

What this means for you

As noted above, we believe applicants and patentees of Australian patents will welcome these changes. It is, however, important that you consider whether any search results should have been lodged with the Patent Office prior to commencement of the new regulations, and that you take any steps to remedy such situations.

Please contact us if you have any questions regarding the duty of disclosure and these recent changes.

For further information, please contact:

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