Journal of Intellectual Property Law & Practice Advance Access published online on May 24, 2008
Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpn083
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© The Authors (2008). Published by Oxford University Press. All rights reserved
The end of the patent duty of disclosure in Australia
Legal context: Regulations issued under the Australian Patents Act 1990 (Cth) abolished, for all patent applications advertised as accepted on or after 22 July 2007, the requirement for applicants and patentees to file at the Australian Patent Office the results of documentary searches relating to the invention.
Key points: The requirement to file search results for applications advertised as accepted before 22 July 2007still remains. As the allowed time limit to take this step has now expired, applicants who seek to remedy a failure to disclose search results on time will need to apply for extensions of time, and to demonstrate that the failure was due to a genuine error or omission by the applicant or their attorney.
Practical significance: This article summarizes the changing duty of disclosure regime that has applied to patent applications pending before the Australian Patent Office between 1 April 2002 and 22 July 2007.
Key Words: In October 2007, regulations were introduced abolishing the ‘duty of disclosure’ for Australian patent applicants. • This change was due, at least in part, to the increasing availability on the internet of search results from the major overseas patent offices. • Applicants and their advisors should be aware that in situations where search results should previously have been disclosed to the Patent Office, but were not, sanctions still remain.
* Partner and Senior Associate, respectively, Allens Arthur Robinson Patent & Trade Marks Attorneys, Melbourne, Australia. www.aar.com.au/patentattorneys. Email: chris.bird{at}aar.com.au.