Press release | 2008-10-21 09:43:30

Australia eases duty of disclosure requirements

Peter Treloar from Shelston IP explains how and why the Australian Government has recently eased its "duty of disclosure" provisions.

Previously, patent applicants had a duty to provide the Australian Patent Office with copies of search reports conducted by foreign patent offices for the corresponding case. This created significant administrative delays and overheads for applicants.

The Australian Patent Office recognized that these search reports were readily available to patent Examiners over the Internet and a significant burden could be lifted on applicants by repealing the relevant provisions. As such, the Australian Government recently acted on the Patent Office’s recommendation to abolish the duty, a move that is being welcomed by applicants.

Although the abolition does not strictly apply retrospectively, the removal of this on us applicants is welcomed.

However, applicants should be careful to note that, according to Australian case law, if you become aware of a relevant foreign citation and don’t voluntarily amend your Australian application within a "reasonable" period, you may not be allowed to make that amendment later.

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