���������������������������

Patent e-Bulletin

SUMMER '2002 DEVELOPMENTS:

BACK TO e-BULLETIN INDEX

FOLLOWING THE UNITED STATES, JAPAN AND AUSTRALIA ENACT� DUTY OF DISCLOSURE REQUIREMENTS*�

U.S. Patent Law has had, for some time, provisions imposing a strict Duty of Disclosure on U.S. Patent Office applicants.� Japan and Australia have now implemented similar obligations on applicants in those countries.

In the United States, the duty of disclosure may be discharged by filing an Information Disclosure Statement identifying the �prior art� accumulated while preparing the patent application.� Failure to comply with the duty of disclosure can result in a subsequent patent being declared invalid.�� The duty to cite prior art continues throughout the prosecution of the application.�� Under U.S. guidelines, prior art is considered �material� if it, by itself or in combination with another reference, renders the invention unpatentable, or if it contradicts the statement by the applicant or his agent regarding the patentability of the invention.

Japanese Patent Laws have now been changed to impose a similar duty to disclose literature describing inventions having particular relevance to the applicant�s invention.� As of September 1, 2002, patent applications should include the literature known by the applicant at the time of filing of the application.

Section 36(4)(ii) of the Patent Law

Where a person desiring a patent knows, at the time of filing a patent application, any inventions publicly known through documents (inventions referred to in Section 29(1)(iii); the same meaning shall apply thereunder in this paragraph) which are related to the invention, the detailed description of the invention shall contain the source of information on the invention publicly known through a document such as the title of a publication in which the invention publicly known through a document is described.

Noncompliance will apparently constitute a ground for rejection.� Data can be added after filing by way of an amendment.� However, the Japanese Patent Office has established a practice to refuse entry of any new discussions on prior art when they are considered not to be directly and unambiguously derived from the original specifications, claims and drawings.��� It is not clear, at this time, which amendments would be allowable and which ones would not.� Nonetheless, our colleagues in Japan suspect that the regulations will be applied less strictly.

More information can be obtained at: http://www.jpo.go.jp/infoe/prior_art_doc.htm

The Australian Patents Act was amended on April 1, 2002 and has expanded the duty of disclosure on all pending cases where normal examination is, or was, requested.�

Under the old law, it was simply necessary to submit copies of search results generated on corresponding patent applications in selected other countries.� This was a "once-only" requirement and there was no ongoing duty of disclosure.�

However, under the new law, the applicant must advise the Australian Patent Office (APO)� of the results of all documentary searches conducted "for the purposes of assessing the patentability of the invention" up until grant of the patent.� Thus, the scope of the duty of disclosure has been expanded to all documentary searches and the duty continues until grant.

The new duty of disclosure, under Australian Patent Law,� applies to applications under �normal examination� but not to those under �modified examination�.�

When complying with the duty of disclosure, it is not necessary to submit copies of the references cited in the documentary search.� Rather, the search report itself is sufficient to meet the new duty requirements.� Failure to comply will mean that the applicant will be unable to amend a claim to overcome a reference, if that reference was not properly disclosed to the APO.� Where normal examination is (or was) requested, documentary search results must be provided to the APO:

a)� at the time of requesting examination, or

�����������

b) before January 1, 2003, or

c) within 6 months of the relevant search being completed,

whichever is the latest of these three dates.

3.17A Results of documentary searches � standard patent

(1)     For subsection 45 (3) of the Act, an applicant informs the Commissioner of the results of documentary searches by providing the following:

(a) if a patent office has conducted a search and has prepared a report of the search � the report;

(b) if a patent office has conducted a search but has not prepared a report of the search � a list of the documents cited by the patent office;

(c) if the applicant or another party has conducted a search � a list of documents that are the result of the search.

(2) The applicant must inform the Commissioner of the results of any documentary searches by the latest of:

(a) the time the applicant asks, under section 44 of the Act, for an examination of the patent request and specification relating to the application; and

(b)6 months after the search is completed; and

(c)1 January 2003.

(3)In this regulation, the date a search is completed is:

(a) for a search conducted by the applicant � the date when the applicant completed the search; or

(b) for a search conducted by another party � the date when the other party informed the applicant or the applicant's representative of the results of the search.

* We thank our colleagues in Japan and Australia for their insight on these law changes.� We hope that you find this article useful. Every effort has been made to ensure its accuracy. However, the article is of a general nature only. You are urged to seek specific advice on your particular concerns and not to rely solely on its content.

jgastle@gastle.com

T: 705.652.7059� F: 705.652.6074�� Toll Free CDA 888.728.2777

� 2001-2005 Gastle & Associates All Rights Reserved