IPA patent 3.4-assisting-unrepresented-private-applicants — IP Australia Patent Manual of Practice and Procedure – 3.4 Assisting unrepresented (private) applicants

Also in this Chapter:​​​​​ 3.1 Quality 3.2 Customer Service Charter (Timeliness Standards) 3.3 Efficient Examination 3.5 Staff Delegations, and Restrictions on Providing Customer Assistance Related Chapters: 3.5.3 Providing advice to applicants and third parties 5.6.4.6 Non-Patent Literature On this Page Overview General guidelines for interacting with private applicants Managing challenging phone calls Using online services Overview This section is about how to assist applicants who are not represented by an IP professional. It uses ‘private’, ‘unrepresented’ and ‘self-represented’ interchangeably to describe these applicants. Many private applicants have a limited understanding of the IP system and patent processes. To provide an appropriate level of customer service, examiners will need to assess each private applicant’s level of knowledge of the IP and patent system, and tailor their communications accordingly. Often this means telephoning the applicant: before issuing an examination report to resolve certain deficiencies; and after issuing the examination report to explain it. To assess a private applicant’s knowledge of the IP and patent system, consider indicators such as: whether the applicant has previously been represented by a patent attorney; the level and nature of past correspondence with the applicant; and the quality of the filed documents, particularly the description and claims. General guidelines for interacting with private applicants Telephone the applicant if the examination cannot start because of critical deficiencies in the application, such as missing claims; Give the applicant reasonable time to resolve the deficiencies before we issue a report; If no previous search results are available, search the invention to the degree possible, even if no claims are present. In the examination report, clearly convey the nature of the search; If the examination report cites any patent documents found in searches, include them with the report as an attachment; Do not include non-patent literature or copyrighted material. Follow the procedures outlined in 5.6.4.6 Non-patent literature ; Communicate objections, including what the objection means, clearly and in plain English; Provide information to help the applicant make and act on a decision, but do not cross over into providing legal or professional advice (see 3.5.3 Providing advice to applicants and third parties ). In summary: Examiners may generally discuss the nature of the objection and how in general an objection of this type can be resolved; Examiners must not dictate or recommend a specific amendment; and Examiners can refer applicants to the IP Australia website ‘Patent Guide’ and to formally drafted specifications in a similar technology area. Do not mislead applicants about the likelihood of a patent being granted; and Inform applicants that they can find a patent attorney through the Patent Attorneys of Australia and Trans-Tasman IP Attorneys Board website. Managing challenging phone calls Private applicants sometimes phone examiners to talk about their patent application. The applicant may be upset about the examination report they received. When this happens, examiners should seek to understand the applicant and assist them as much as possible. If the applicant indicates that they had difficulty understanding the examination report, the examiner needs to consider how to communicate the issues better. This can include: explaining patent law concepts in simpler terms; providing further information; pointing out resources on our website that will help them understand the patent system better; reminding them that professional services are available; and pointing out resources on our website that will help them assess whether they need professional services and, if so, find an attorney (Attorney Toolkit). If the examination report indicates that a patent is not likely to be granted, examiners may need to explain the issues carefully to the applicant again. For example, there may be significant deficiencies in the specification that cannot be fixed by amendments. Examiners need to be clear that they cannot: assist applicants in drafting the specification; and provide advice on what actions to take. Using online services IP Australia’s online services portal allows applicants to: apply for and renew IP rights – patents, trade marks, designs, and plant breeder’s rights; make payments; manage IP rights; review correspondence including examination reports; and keep their details up to date. Some applicants may not fully understand how to use online services to manage their IP right – for example, to respond to an examination report or pay a renewal fee. Examiners should try to help the applicant if they feel comfortable. Otherwise, direct the applicant to an SME case manager. SME case managers are trained to provide additional support to applicants, including in using online services.