APRIL 2002

PATENTS

Inside: Changes to law

Search results – The Australian patent system has undergone major changes this the new duty of month with the commencement of the Amendment Act 2001 and Patents Amendments Regulations 2002 on April 1. In disclosure particular, there are two elements of the new legislation which will The new grace period have an immediate impact on your patent strategy and practice: the Duty of Disclosure and the Grace Period. If you ignore the former or misapply the latter, the consequences could be severe. Special Counsel Chris Bird considers the implications. Search results – the new duty of disclosure With a view to ensuring the grant of valid Australian patents, the new legislation requires disclosure of the results of all documentary searches carried out by or on behalf of the applicant relating to:

• the application; • any related ; and Your publication: • any corresponding application fi led outside Australia.

If you would prefer to receive our This duty continues up until grant. publications in electronic format, There are signifi cant consequences if an applicant fails to disclose search results. please email: In particular, claims of an issued patent cannot be amended if the effect of this [email protected] amendment would be to remove a or inventive step ground of objection arising from the existence of information that should have been disclosed during the granting www.aar.com.au process. A patent may also be vulnerable to revocation on the basis that the patent was VISIT OUR WEB SITE obtained by fraud, false suggestion or misrepresentation if the patentee intentionally TO READ ALL FOCUS EDITIONS concealed search results. APRIL 2002

The Australian disclosure requirement is a little A change in practice different to the United States of America (US) With the new duty of disclosure, it is essential when ‘duty of candour’ which includes a duty to disclose instructing us to provide all search results. We will all information material to . In contrast, be reminding you of this duty in our correspondence Australia now requires the disclosure of the results of regarding your pending Australian patent applications. all documentary searches carried out by or on behalf of the applicant for the purpose of assessing patentability Additionally, careful thought will need to be given as of an invention disclosed in an application. It includes to how you - and your clients, business partners and private searches as well as searches carried out by consultants - carry out and record in-house searches patent offi ces. Even if such a search revealed no when assessing the patentability of a new idea. In relevant documents, those search results must be many cases, it may be better to entrust such prior provided to the Patent Offi ce. This clearly places a new art searching to your patent attorney, who will be best responsibility on all applicants and their advisors. placed to ensure that the results of such searches are duly fi led. Procedural requirements Finally, we do not see this disclosure requirement as For a standard , search results must likely to substantially add to the burden in obtaining be provided before the later of requesting examination, Australian patent protection. The purpose of the or six months after completion of the search. The change is to ensure that applications are adequately corresponding time limits are stricter in the case of searched and all available is considered Innovation Patents. to assist in granting valid patents. The disclosure Fortunately, transitional provisions afford some provisions also provide a disincentive for an applicant valuable time for compliance, as results that would be to conceal relevant prior art, the consequence of which due (or overdue) on 1 April 2002 can by fi led up until would be a patent that includes invalid claims. We 1 January 2003. Complications may arise, however, believe that the question of whether failure to disclose if a pending patent is accepted before that date, and is inadvertent or not will be paramount, and this will fall search results have not been fi led. within a court’s discretionary powers to decide based on evidence. Nevertheless, it is always better to err on The Patent Offi ce does not require copies of the prior the conservative side and to disclose all known search art documents, but merely lists of the results of search results. reports. This applies both to patent and non-patent If you have any questions regarding how you might literature. Suffi cient bibliographic information must be adapt your practice to best comply with this new duty, provided to enable the examiner to identify each please contact any of our patent attorneys. document cited.

‘Screening’ searches are often conducted on the The new grace period Internet or on other databases to create a list of Prior to the new changes, some prospective patent ‘possible’ relevant documents which are subsequently applications or granted patents have been invalidated culled to create the fi nal search results. Fortunately, because of disclosures made by an or by such intermediate results do not need to be reported the applicant before the application was fi rst fi led. as they are not viewed as part of the ‘results’ of a Furthermore, if a complete application was found not search. It remains to be seen how easy this distinction to be entitled to the priority of a provisional patent will actually operate in practice. application – due to the claimed invention not having been adequately disclosed in the provisional – then It may be better to entrust prior any disclosure of that invention between the fi ling of the provisional and complete application could prior art searching to your patent disclose the invention and thus invalidate the patent attorney. ultimately granted. In academic circles, there has long been an is the lack of corresponding grace periods across the uncomfortable tension between the desire for early world. The European Union in particular does not offer publication of research results and the requirement for such a provision. So disclosing an invention before maintaining secrecy until at least a provisional patent fi ling is likely to be fatal to obtaining patent protection application has been fi led. As a result, there can be a in Europe. signifi cant gulf - and therefore a signifi cant time delay - Further, the grace period is only able to provide between arriving at an invention and being in a position immunity against potentially invalidating self- to render that invention in a form suitable for fi ling. publications. It is of no help if a third party publishes Indeed, as research and development progresses, an invalidating reference before you fi le your patent there can be considerable diffi culty in deciding when is application. It is worth noting that experience under the right time to fi le a provisional application. the US system suggests that applicants use the grace To remedy this situation, now period primarily as a ‘safety net’, rather than as a tool offers a ‘grace period’ to applicants, enabling a to systematically delay fi ling patent applications. So the complete patent application to be made within 12 message is still ‘fi le as early as possible’. months of initial publication or use of the invention by If you have any questions as to how this new grace the applicant, or by its predecessors in title, without the period may affect your business strategy or your patent publication or use affecting validity of a patent issuing fi ling programs, please do not hesitate to contact any of on the application. Previously, grace periods were only our patent attorneys. available in the case of disclosures made under very limited circumstances.

The new grace period applies to any disclosure made on or after 1 April 2002.

What does this mean in practice? A grace period has long been available under the US Patent Code, and so patent practitioners operating in the international arena are accustomed to the general concept. In particular, should you fi nd that an employee or a client has already published his or her new idea, all is defi nitely not lost. As long as a year has not elapsed from that publication, a complete application for the disclosed invention can now be fi led in Australia, as well as in selected territories such as the US.

For many inventors, a 12 month grace period will certainly be seen as a good thing.

Treat the grace period as a ‘safety net’ – not as a tool to delay fi ling your patent application.

So where’s the catch? The greatest danger in relying on the new provision and not fi ling a patent application before you disclose APRIL 2002

For further information, please contact:

Chris Bird Trevor Davies Colin Oberin Philip Macken Sydney Melbourne Special Counsel, Melbourne Partner, Sydney Partner, Melbourne Partner, Sydney Brisbane +61 3 9613 8259 +61 2 9230 4007 +61 3 9613 8931 +61 2 9230 4927 Perth Gold Coast [email protected] [email protected] [email protected] [email protected] Port Moresby Singapore Hong Kong Jakarta Shanghai Have your details changed? Bangkok Phnom Penh If your details have changed or you would like to subscribe or unsubscribe to this publication or others, please go to www.aar.com.au/general/subscribe.htm or 7234 contact Barbara Leis on +61 7 3334 3371 or email [email protected] www.aar.com.au