IPA patent 5.6.9.4-revocation-of-acceptance — IP Australia Patent Manual of Practice and Procedure – 5.6.9.4 Revocation of acceptance

Also in this Chapter: 5.6.9.1 Conditions and Time for Acceptance 5.6.9.2 Postponement of Acceptance 5.6.9.3 Extension of Acceptance Period 5.6.9.5 Refusal of acceptance - Specific circumstances 5.6.9.6 Refusal of an Application 5.6.9.7 Continued Examination - Result of a decision 5.6.9.8 Lapsing of an application 5.6.9.9 Withdrawal of an application 5.6.9.10 Double patenting, Multiple Applications - s62(2), s101B(2)(h) 5.6.9.11 Parallel Applications (Applications for both innovation and standard) 5.6.9.12 Register of Patents 5.6.9.13 Annex A - Example Bar-to-Grant Letter (Accepted Despite Multiple Inventions) 5.6.9.14 Acceptance and QRS Issues Key Legislation Patents Act: s49 Acceptance of patent request: standard patent s50A Revocation of acceptance s223 Extensions of time Patents Regulations: reg 10.6 Time for allowance of amendments reg 13.4 Prescribed period: acceptance of request and specification reg 22.22 Exercise of discretionary powers by Commissioner Related Chapters: ​​​​​​​​​​​​​​ 5.6.1.3 Definitions (Invention, Alleged Invention, Meaning of a Document etc.) 5.6.5 Novelty, Whole of Contents, and Secret Use 5.6.6 Inventive Step 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (s40) 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture) ; On this page Overview Conditions for revocation Relevant circumstances Consequences of revocation Process for Revocation Acceptance ultra vires . Overview Examiners are to ensure that as far as practicable, all matters bearing on the acceptance of an application are considered fully prior to acceptance. Where an issue comes to an examiner's attention after the acceptance of an application has been completed, acceptance cannot be reversed, undone, or re-done other than in exceptional circumstances. Where an application is accepted on or after 15 April 2013, and the patent has not yet been granted, acceptance may be revoked under s50A. This has the effect that the application is taken never to have been accepted and examination of the application can continue. The granting of leave to amend and the allowance of any amendments that occurred at the same time will also be revoked by virtue of reg 10.6B. If acceptance is revoked, the final date for acceptance (FDA) is then governed by reg 13.4(1)(ga) and will (unless other circumstances apply) be the latter of the normal FDA and 3 months from the date that acceptance was revoked. The power to revoke acceptance under s50A is only to be exercised by the Assistant General Manager (Oppositions) or the Supervising Examiner (Oppositions). If it becomes apparent that an error has occurred in accepting an application, the matter is to be referred to Oppositions immediately. Conditions for Revocation Under s50A, the Commissioner may revoke the acceptance of a patent request and complete specification if satisfied, on the balance of probabilities, that: a) a patent has not been granted on the application; b) the request and specification should not have been accepted, taking account of all the circumstances that existed when the request and specification were accepted (whether or not the Commissioner knew then of their existence); and ​​​​​​​ c) it is reasonable to revoke the acceptance, taking account of all the circumstances. Paragraph (a) is a fundamental prerequisite for the operation of s50A. After grant, acceptance cannot be revoked. Before grant, acceptance may be revoked, regardless of whether acceptance has been advertised or whether an opposition has been filed. Any actions taken on the basis of the revoked acceptance are void and of no effect. Paragraph (b) clarifies that the Commissioner is able to take account of any circumstance that existed which should have prevented acceptance. It is not necessary that the Commissioner knew, or was in a position to know, of the existence of the circumstances at the time the application was accepted for this paragraph to apply. This may include an error of judgement or omission on the part of an examiner, or information regarding the application that was not available to the Commissioner at the time of examination. It is important to note that the Commissioner is not limited in what may be considered. Paragraph (c) clarifies that the Commissioner must act reasonably, and have regard to all the circumstances, when deciding whether to revoke acceptance. The intention of this provision is to focus attention on the reasonableness of the Commissioner’s actions, and not on whether an ‘error or omission’ or a ‘special circumstance’ preceded the acceptance of the application. Relevant Circumstances The following is not intended to limit the circumstances under which the Commissioner will revoke acceptance under s50A. However, acceptance will generally be revoked where it is clear that, in light of the documents then on file, the application should not have been accepted. This includes where the application was accepted: without relevant amendments or submissions being taken into account; based on the wrong specification or set of amendments; based on the wrong statutory provisions; or without consideration of any other clear bar to acceptance. However, it is not the practice of the Commissioner to revoke acceptance where re-examination is available. Where relevant prior art is identified after acceptance, or an examiner subsequently comes to a different view on a substantive ground of objection, the Commissioner will consider whether the application should be re-examined under the provisions of s97 rather than revocation. In particular revocation is generally not appropriate where acceptance occurred despite the existence of errors in the quality review process; see 5.6.9.14 Acceptance and QRS Issues . Acceptance will also not be revoked merely because the applicant requests the Commissioner to do so, for example, to allow further amendments to be filed and considered. The Commissioner will also not entertain third party requests to consider revoking acceptance as an alternative to opposition. Revocation of acceptance will not occur unless that action is requested by the applicant, the applicant has indicated its consent or the applicant has been given the opportunity to be heard as prescribed in reg 22.22. Consequences of Revocation If the Commissioner revokes acceptance: the patent request and complete specification are taken to have never been accepted; the Commissioner must continue to examine, and report on, the application under s45; and s49 and s50 continue to apply in relation to the request and specification. Furthermore, under reg 10.6B, any leave to amend that was granted at the time of acceptance and the allowance of the amendment will also be revoked. Examination can then proceed as if acceptance and allowance of the amendments had not occurred. However, the time for acceptance may be extended where a decision is made to revoke acceptance. This is governed by reg 13.4(1)(ga), such that the final date for acceptance will be 3 months from the date that acceptance is revoked, unless a later date applies. This may include the normal date for acceptance that would have applied had the application not been accepted. Any further actions taken that are dependent on the acceptance of the application, including advertisement, publication, and the liability for acceptance fees will be of no effect and will be reversed. Any notice of opposition filed will also be of no effect. Process for Revocation Where it becomes apparent that an error has occurred in accepting an application, the matter is to be referred to Oppositions immediately. Oppositions will consider the circumstances and determine whether the purported acceptance is a valid acceptance (that is, not ultra vires ), is valid but should be revoked, or is valid and re-examination of the application should be considered. Oppositions will carry out any administrative actions required, including providing the applicant with an opportunity to be heard, arranging for the PAMS record to be corrected and adjusting the date for acceptance as appropriate. Where a notice of acceptance has been published, Oppositions will also arrange for a corrigendum to be issued. The power to revoke acceptance under s50A is only to be exercised by the Assistant General Manager (Oppositions) or the Supervising Examiner (Oppositions). Acceptance ultra vires An acceptance will be of no effect if it is ultra vires (i.e. beyond one's legal power or authority), for example, if an examiner accepts a case whilst there is a current postponement of acceptance in place, or if the acceptance is dated beyond the final date for acceptance. Acceptance is not considered ultra vires where this occurred despite the existence of errors in the quality review process; see 5.6.9.14 Acceptance and QRS Issues . A purported acceptance that is found to be ultra vires cannot be revoked under s50A, as the application has in reality not been accepted. In this case, the provisions of s50A and reg 13.4(1)(ga) do not apply. The granting of leave to amend effected at the same time may, however, be revoked under reg 10.6B(3). Where Oppositions determine that an acceptance is ultra vires , it will undertake take any steps necessary to correct the PAMS record, or any other consequential actions if required. This may include consideration of whether an extension of time should be granted under s223(1) for acceptance of the application.