Proposed Australian patent prosecution and opposition rule changes for US Patent Attorneys

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[author: Tom Gumley]

Since 15 April 2012, the date on which Australia’s new patent law came into force, we have been waiting to see the draft regulations that will underpin the operation of patent prosecution and opposition proceedings. These draft regulations are now available, Intellectual Property Legislation Amendment Regulation 2012, Schedule 3 and Intellectual Property Legislation Amendment Regulation 2012, Schedule 6.

The draft regulations are proposed to come into force on 15 April 2013. It is possible that they may yet be amended and the due date for public submissions is 21 November 2012.

Some proposed key changes are as follows:

Patent examination

1. acceptance (allowance) due date to be shortened from 21 months to 12 months from receipt of a first examination report.

2. due date for requesting examination to be shortened from 6 months to 2 months from receipt of a direction from the Patent Office to request examination.

Item 1 would apply to all applications where a request for examination is made on or after 15 April 2013. Item 2 would apply to all directions issued on or after 15 April 2013.

Patent Opposition

3. two categories of opposition to be recognised, namely substantive (opposition to grant of patent or to patent term extension) and procedural (allowance of amendments and extensions of time).

4. all documents to be filed with Patent Office, eliminating current requirement for service by one party on another, and the opportunity for one party to object to late service of documents on another.

5. due date for commencing procedural opposition by filing Notice of Opposition to be 2 months, which would shorten the due date for opposition to amendment by 1 month, and would extend the due date for opposition to extension of time by 1 month.

6. for procedural opposition, the due date for filing an Opposition Statement (which would replace Statement of Grounds & Particulars) to be shortened to 1 month from filing of Notice of Opposition.

7. Patent Office may dismiss opposition if documents not filed on filing of opposition.

8. for substantive opposition, the due date for opponent’s evidence in reply to be reduced from 3 months to 2 months.

9. a higher threshold to be met to obtain extension of time for filing evidence.

10. it would not be possible to file evidence if time for doing so is not extended.

11. for procedural opposition, the Office to be given discretion to direct, on a case-by-case basis the appropriate practice and procedures including directing evidential timeframes.

12. no mechanism to be provided to request leave to submit further evidence.

13. opponent to file summaries of submissions 10 days prior to hearing, and applicant to do same within 5 days.

14. divisional applications could no longer be filed during opposition.

It is proposed that most of the Patent opposition changes would apply to opposition proceedings commenced after 15 April 2013. However, some changes are proposed to apply to opposition proceedings commenced before this time, including those changes at items 4, 9 and 13.

We will cover these proposed changes in more detail in future articles. In the meantime, please read our Guide to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.