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Issue 133 | November 10, 2003
Update to the Duty of Disclosure under Australian Patent Law
 Following a number of interim provisions since the Australian Patent Law Changes of April 1, 2002 took effect, the obligation to provide search results has recently been finalized.

The Australian Patent Office now requires applicants to submit the results of any searches performed by, or on behalf of, foreign patent offices in connection with corresponding applications filed outside of Australia. This is a change from prior versions of the law, which required applicants to provide the results of all documentary searches, even those performed by or on behalf of the applicant.

It is to be noted that the Australian Duty of Disclosure differs from that of Information Disclosure Statement requirements in the United States in that there is no test for relevance of the documents. The Australian Patent Office must be notified of all documents cited.

Compliance with the new Duty of Disclosure may be accomplished by providing:
  • A list of all documents cited by a foreign patent office in either a distinct Search Report or an Examiner’s Report (Office Action);
    • For corresponding US patent applications/patents, it is sufficient to provide a copy of the Notice of References Cited (Form PTO-892) or a copy of the face of any issued US Patent.
    or
  • A copy of the search report issued by a foreign patent office
    • It is important to note that a copy of the search report should be provided any time the report identifies the relevance of the document by special category (e.g., X, Y, A, etc.).
      • It is not necessary to provide the results of an International Search Report or International Preliminary Examination for the International Application of which the Australian application is the national stage.
It is recommended that the above be provided at the time that Examination is requested. It is important to note, however, that the deadline for providing search results is actually the latest of:
  • Three months from the request for examination (extendible by three months);
  • Three months from the date search by the foreign patent office is completed (extendible by three months); or
  • February 1, 2004
As is the case with in the United States, the Duty of Disclosure continues until grant of the patent. Search results generated before grant must be provided to the Australian Patent Office even if the relevant deadline falls after the patent is sealed. If necessary, the Commissioner may initiate re-examination of the application to consider search results provided after the application has been accepted or the patent has been sealed.

The sanction for non-compliance is not loss of the patent but rather a restriction on the types of amendments that may be made post-grant. This sanction is expected to have very little applicability, however, in view of the fact that infringement may be pursued in respect of any claim under Australian Law. The only time the sanction would apply would be when it was necessary to amend a claim to add a feature from the specification not already present in a dependent claim in order to distinguish over prior art information that should have been disclosed.

For more information on international filing strategies for your staff and clients, contact the author of this issue, Marie Gilfillan (mgilfillan@darbylaw.com), at Darby & Darby P.C. in New York, New York.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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