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Amendments to the Australian Patents Act and Regulations that came into force on 1 April 2002 introduced an obligation, for applicants of Australian patent applications, to disclose search results to the Australian Patent Office. The obligation was restricted to the results of patentability searches conducted by, or on behalf of, foreign patent offices in respect of corresponding applications.
Amendments to the Australian Patents Regulations that came into force on 22 October 2007 now effectively remove this ongoing obligation.
This apparent aboutface has come about as a result of ongoing lobbying from the Australian patent attorney profession and as a result of the increase of ready availability of patent office search results to the Australian Patent Office via the internet.
The amendments effectively remove the duty of disclosure in relation to all Australian patent applications that had not been advertised in the Official Journal as accepted (allowed) prior to 22 July 2007 (being three months before the effective date of the amendments). The duty does, however, still exist in relation to searches that were conducted prior to 22 April 2007 in relation to applications that were advertised as accepted prior to 22 July 2007, and in respect of which a request for normal examination had been filed prior to 22 April 2007. For these specific earlier searches, the search result disclosure deadline would have passed by 22 October 2007 and, accordingly, if the duty of disclosure deadlines have been complied with to date then there will be no outstanding duty in relation to such applications.
The obligation to disclose search results has also effectively been removed in relation to all innovation patents apart from those in respect of which a request for post-grant examination has been filed and all necessary examination fees paid prior to 22 October 2007.
These changes to Australian practice will greatly reduce the burden on applicants for Australian patent applications in keeping track of search results from foreign jurisdictions and reduce the associated costs.
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