Regulations applying before April 15, 2013
The New Patent Regulations2 which apply to a patent application on which examination was requested prior to April 15, 2013 require that a Notice must be filed before the application is accepted (in other words “allowed”). Furthermore, while a failure to file a Notice by acceptance is not a statutory ground of objection, the Patent Office is unable to accept an application if the Notice has not been filed by the acceptance due date. According to the Office, to do otherwise would mean that the entitlement of the person said to be entitled to grant, and the entitlement to priority (and therefore the robustness of the priority claim) would remain unresolved after acceptance.
The Regulations which came into force on April 15, 2013, and applicable to applications on which examination had not been requested prior to April 15, 2013, now require that the Notice must be filed at an earlier time than acceptance, and more particularly at the time of request for examination. The relevant due date applying to these applications is 2 months from the date of receipt of a direction to request examination from the Patent Office. If the Notice is not filed by this due date, the application will lapse for reason that examination was not effectively requested by the due date. The Patent Office will notify the applicant of failure to file the Notice, and lapsing.
It seems that the Patent Office is concerned that the inability of the Office to accept an application merely because a Notice has not been filed “frustrates the legitimate concerns of third parties to resolve issues of ownership and unnecessarily increases the period of uncertainty for members of the public trying to determine the outcome of an application”3.
The reasoning is perhaps a little curious. First, the law prior to April 15, 2013 provided for a third party to contest entitlement to grant of rights before an application is accepted4.
Second, if the application process involves a ‘period of uncertainty’, surely the period commences from the time of Australian Convention or PCT filing. One wonders whether whittling back the time for filing the Notice to the time for request for examination significantly minimises this period of time, especially when the time by which examination must be requested is 5 years from the Convention or PCT filing date?
Another explanation may be simply that the Office is keen to improve workflow by accepting applications where there is no lawful ground of objection. If that’s the underlying reason, then the new Regulation makes sense.
Impact & recommendations
Importantly, the new Regulation does not remove the burden on the applicant to ensure that the person nominated for grant of patent is correctly identified on the Notice before the application is accepted. This burden applies in the current law.
Given above, the main impact seems to be in relation to the earlier timing required for establishing entitlement to grant and priority. As the application should lapse if the Notice is not filed by the examination request due date, a Notice stating the relevant entitlement, as understood at the time, will need to be filed by the due date. If, at that time, there is concern that reasons for entitlement in the Notice may be incorrect, it will be necessary to take some action that would prevent the application from being accepted.
One option may be to introduce an amendment to incorporate an omnibus claim which, as explained in Changes to Patent Entitlement in Australia and New Zealand, is generally not permissible under the new law. Another option may be to file a divisional application instead of requesting examination, if this would provide sufficient time to resolve entitlement.
1. Other statements may also be required. For example, where the relevant invention involves a deposit of a micro-organism made according to the Budapest Treaty, the Notice must also set forth the entitlement to rely on the relevant deposit.
2. Patent Regulations under the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
3. Explanatory memorandum, Schedule 6, Item 8
4. s. 36 Patent Act, 1990, now repealed under the Intellectual Property Laws Amendment (Raising the Bar) Act 2012