IPA patent 5.6.14.1-effect-of-prohibition-orders — IP Australia Patent Manual of Practice and Procedure – 5.6.14.1 Effect of Prohibition Orders

Also in this Chapter: 5.6.14.2 Applications relating the Defence of the Commonwealth 5.6.14.3 Applications relating to Associated Technology Key Legislation: Patents Act: s152 Notice of prohibitions or restrictions on publication s173 Prohibition of publication of information about inventions Patents Regulations: Reg 15.3 Prescribed period: order relating to standard patent Reg 17.1A Prescribed period: order relating to standard patent ​​​​​​​ Defence and Strategic Goods List ​​​​​​​​​​​​​​​​​​​​​ Overview Under s173, the Commissioner may prohibit or restrict the publication or communication of information about the subject matter of an application in the interests of the defence of the Commonwealth. Similar restrictions on publication or communication of information relating to certain applications can also be imposed under the provisions of s152. Cases where such restrictions are imposed are referred to as ‘prohibited cases’. Examples of subject matter that may be subject to a prohibition order under s173 include various defence related technologies such explosives, the development of weapons of mass destruction etc. and those as outlined in the Defence and Strategic Goods List (“DGSL technology”). Restrictions under s152 are reserved for applications concerning aspects of nuclear technologies referred to as “associated technology“ pursuant to s147. Effect of prohibition orders Information about a complete application under a prohibition order cannot be made open to public inspection. Generally, an application that is the subject of a prohibition order can be processed up to acceptance. However, acceptance of the application cannot be advertised and the application cannot proceed to grant (s153(1), s174(1)). If the prohibition order is removed following acceptance of the application, then acceptance must be advertised within 1 month of the removal of the order (reg 15.3, reg 17.1A). ​​​​​​​Note: Publication or communication of information in contravention of a prohibition order without written consent of the Commissioner carries a penalty of 2 years imprisonment (s152, s173). Effect of prohibition orders on the prior art base Applications under prohibition orders are not published and thus do not form part of the prior art base for the purposes of s7 of the Act.