Disclosure changes lighten applicants' load

Mark Roberts

Amendments to the Australian Patents Act and Regulations effective from April 1 2002 introduced an extended requirement to submit search results. The legislation required applicants to submit to the Patent Office (IP Australia) results of any documentary searches conducted by or on behalf of the applicant (or its predecessor in title) for the purposes of assessing patentability of an Australian or corresponding foreign patent application. This was a very broad and onerous requirement, which gave rise to considerable confusion and concern regarding the types of search results covered and the format in which they were required to be submitted. Amendments to the Patents Act and Regulations effective from August 26 2003 will allay many of these concerns, while at the same time facilitating an efficient and stringent examination process.

In March 1999 the Advisory Council on Industrial Property (ACIP) presented its recommendations from its Review of Enforcement of Industrial Property Rights. These recommendations followed a three-year process of reviewing all aspects of enforcement of Australian industrial property rights, in view of the perception that efficient and cost effective enforcement of IP rights against infringement was problematic. In reaching its conclusions, and based upon the various submissions presented to it by interested parties, ACIP formed the view that innovation would be fostered and reliance on the patent system would be increased if enforcement costs could be minimized and outcomes in enforcement proceedings were more predictable. To these ends ACIP made a number of related recommendations, the most important of which were that:

• there should be an increased presumption of validity of granted Australian patents;

• the prior art base for novelty and inventiveness assessments should be expanded;

• there should be a change in the burden of proof in considerations of novelty and inventiveness by patent examiners; and

• patent applicants should be under an obligation to provide IP Australia with details of any prior art material they become aware of during preparation or prosecution of the patent application or corresponding applications in other countries.

It can be seen therefore that the initial recommendation regarding the extension of the requirement to submit search results was one of a package of measures intended generally to strengthen patents granted by IP Australia and to prevent the grant of patents in Australia in respect of inventions that would not have been patentable in other countries.

In the September 2000 final report to government of the Intellectual Property and Competition Review Committee (the Ergas Committee) on the Review of Intellectual Property Legislation under the Competition Principles Agreement, a number of similar recommendations to those previously proposed by ACIP were made. In particular, the Ergas Committee agreed to the proposed change in the burden of proof in considerations of novelty and inventiveness by patent examiners, recommended that additional resources should be allocated to IP Australia in an endeavour to improve the quality of examination and reiterated and expanded upon the ACIP recommendation to extend the duty upon applicants to disclose details of prior art.

A vote for disclosure

The Ergas Committee agreed that an applicant, or where the applicant is a corporation, a person employed by the applicant who is concerned with preparation or prosecution of the application, must disclose to IP Australia any prior art material that has come to their attention during the course of preparing or prosecuting the application in Australia or elsewhere. The Ergas Committee further suggested that company applicants must ensure there is a "reasonable enquiry" conducted within the company or organization about what prior art information is known within the company. Importantly, the Ergas Committee recommended that intentional non-disclosure of prior art should lead to a situation where it is not possible to amend the patent to distinguish it from the prior art that should earlier have been disclosed.

It is worth noting that at the time of the recommendations by both ACIP and the Ergas Committee there was in fact a limited duty to disclose prior search results already in place. Under the former provisions (original disclosure requirements) that were governed by Section 45(3) of the Patents Act 1990 it was possible for the commissioner from time to time to direct that applicants provide details of the results of searches carried out by specified foreign patent offices in relation to corresponding applications filed outside of Australia.

Although on their face these original disclosure requirements were potentially quite broad in their application, they were in fact of diminishing relevance. There were several reasons for this. Firstly, although the commissioner had the power to direct applicants to provide search results under the specified conditions "from time to time", in reality such directions were only ever made at the time of requesting examination in relation to convention applications. It was perceived within IP Australia that the administrative burden associated with issuing directions to submit search results in other situations, or on a more frequent basis, outweighed the potential benefit in terms of the stringency of the examination process. Furthermore, in view of the increasing proportion of Australian applications being filed through the PCT (which have searches conducted during their international phase) there were fewer and fewer convention applications being filed to which the original disclosure requirements applied.

As indicated above, the format adopted for responding to the duty to disclose could vary between providing a list of the documents identified in the search and providing a copy of the actual search report, depending on the nature of the search conducted and the manner in which it was reported. However, there was no requirement to submit actual copies of the documents identified in the searches. More importantly, there was no relevancy test relating to the search results required to be submitted. This is an important distinction from the recommendations of ACIP, in view of the fact that ACIP actually suggested introduction of a duty to disclose prior art along the lines of the US system.

US comparisons

The US duty of disclosure is, of course, tempered by a requirement that the prior art submitted is material to patentability. The Australian requirement to submit search results that was effective from April 1 2002 was therefore extremely broad in scope. To satisfy the formal requirements of the legislation it was necessary to submit the results of all searches conducted for the purposes of assessing patentability of an invention. It was arguable that an initial search result conducted to determine novelty of the invention, which may for example have been conducted by entering key words or classification codes into a patent database, and which may have revealed a thousand or so documents that included the specified key words, could have been required to be disclosed. Of course the more usual situation that arises when searches of the patent literature are conducted is that an initial search revealing, say, 1,000 documents would be narrowed by entering further search criteria, to reduce the field of results to a more manageable number, for example, of the order of 10 to 50 documents.

The disclosure requirements effective from April 1 2002 would also have required submission of the results of searches conducted by an assignor of the patent application, even though the assignee of the patent rights may never have received from the assignor details of the searches previously conducted. Ultimately, discussion of issues such as these led to political pressure for the disclosure requirements to be further amended.

Documents of suspect relevance

In practical terms, the disclosure requirements effective from April 1 2002 were of little benefit to IP Australia. To ensure compliance with the formal requirements of the legislation applicants were submitting vast lists of documents identified in searches previously conducted. These lists were essentially meaningless as there was no requirement for applicants to specify the relevance of documents drawn to the attention of IP Australia, or indeed to provide copies of the documents themselves. It was inconceivable that patent examiners would obtain and review copies of all documents disclosed. It appeared to be the case that interest from examiners was only aroused in the situation where a search report submitted provided an indication of the relevance of the document, such as for example, by including the "X", "Y" or "A" categorization of relevance routinely provided with International Search Reports or search reports issued by the European Patent Office.

Disclosure only of patentability search results

Another interesting anomaly of the legislation was that it was necessary to provide the results of searches conducted only for the purposes of assessing patentability. Therefore, if an extremely relevant document came to light as a result of a search conducted for the purposes of determining infringement or freedom to operate, then no matter how relevant the document, it would not need to be disclosed to IP Australia. Furthermore, although the regulations accompanying the Patents Amendment Act 2001 specified the formalities for compliance with the disclosure requirements, there was no obvious sanction for failing to comply formally. In saying this, however, some commentators expressed the view that a failure to comply formally with the disclosure requirements could potentially give rise to a ground of patent revocation, on the basis that the patent was obtained by fraud, false suggestion or misrepresentation. It would seem something of an unlikely scenario, however, that a case could successfully be made out that a patent was obtained by fraud, false suggestion or misrepresentation simply because a list of documents identified in a search by another patent office was submitted in preference to a copy of the actual patent office search report.

As the Ergas Committee recommended, the Patents Amendment Act 2001 did enshrine in the legislation that a patentee would be prevented from amending a patent to distinguish it from prior art that should have been submitted to IP Australia under the disclosure requirements. As will be understood, this was a potentially severe penalty, and although not as severe as the US penalty of inability to enforce a patent in the situation where the duty of disclosure has not been complied with, this sanction should be sufficient motivation to ensure the compliance of applicants with the disclosure requirements.

Current legislative framework

In respect of all Australian patent applications accepted on or after April 1 2002 it is now necessary to submit only results of searches conducted by or on behalf of a foreign Patent Office in relation to a corresponding application. In complying, applicants may submit either a list of documents cited or a copy of the Patent Office search report. However, for results of EPO or UK Patent Office searches submitted after August 26 2003 it is necessary to include the symbol denoting the relevance of each cited document (for example, "X", "Y" or "A" categorization). Details of relevant searches completed up to the date of sealing of the patent need to be submitted, and the deadline for complying is the latest of:

• six months from the date of completion of the search;

• six months after filing of a request for examination; or

• February 1 2004.

Extensions of time for submitting search results will be available.

The amended legislation also specifies particular categories of search results that are not required to be disclosed, which include:

• searches that produce a nil result;

• an International Search Report (ISR) or search conducted during International Preliminary Examination;

• search results previously provided for parent applications (going back two generations only) of a divisional patent application;

• search results previously provided for a parent application of an application for a patent of addition;

• search results not received by the applicant; and

• search results previously provided (other than those from the EPO or UK Patent Offices), or which are specified in an ISR.

As was the case with the previous legislation, failure to comply with the requirement is a potentially serious matter, which may lead to the sanction of being prevented from amending the patent claims to distinguish from a prior art document that should earlier have been disclosed.

The amended legislation should have the effect of limiting the search results that must be disclosed to those that will be useful to Australian patent examiners in effecting a comprehensive examination, at the same time reducing the burden of compliance upon applicants.

Ways to manage disclosure

In view of the disclosure requirements now in place in Australia, it will be important for IP managers to ensure they have internal systems and procedures in place to ensure the disclosure requirements are met in a timely and consistent fashion. In devising such processes it is firstly worth bearing in mind that the disclosure requirements under Australian law are different from the US duty of disclosure requirement, and from requirements to disclose prior art information in other jurisdictions. Although it may be sufficient to satisfy the Australian legislation to submit copies of the US Information Disclosure Statement (IDS) along with any Notices of References Cited issued by the US examiner on a corresponding application, it may in fact be the case that by submitting the IDS the patent applicant is providing the Australian Patent Office with information above and beyond that which is required. This could have the effect that narrower claims are granted in Australia than could have been secured if all of the IDS information was not submitted to IP Australia.

The other concern with regard to simply submitting the US IDS is that if there are any documents within the IDS that have come to light through an EPO or UK Patent Office search, the symbol denoting the relevance of these documents would also need to be submitted.

One file for one patent group

Another jurisdiction that has a similar requirement to submit search results produced by foreign patent offices is Israel. Although information submitted to the Israeli Patent Office would appear likely to satisfy the Australian requirements, it is once again worth bearing in mind that the symbol denoting the relevance of items that came to light through an EPO or UK Patent Office search would still need to be provided.

One suggestion that may be offered to IP portfolio managers in relation to complying with the Australian prior art disclosure requirements is that a separate search results file be maintained in relation to each family of patent applications. Regular reminders may then be established on Australian patent application files, to initiate a review of the search results file to ensure that copies of all patent office searches issued before grant of the Australian patent are forwarded to the relevant Australian attorney for submission to IP Australia. Perhaps the most important reminder would issue at or around the time of advertisement of acceptance of the Australian application, to ensure at this late stage that all disclosure requirements have been met.

© Mark Roberts 2003. The author is a partner of Davies Collison Cave in Melbourne