Following the conclusion of consultations about the draft Intellectual Property Legislation Amendment Regulations (the regulations to implement the “Raising the Bar” amendments), IP Australia has published a document outlining the outcomes of the consultation process.
The document outlines what IP Australia is proposing to do/implement in relation to:
- preliminary search and opinion
- search fee
- priority date
- other things
- filing of evidence in oppositions
- extensions of time to file evidence
- confidentiality
- fees for notice of intention to defend
defence(TM oppositions) (lid dip: Andrew Sykes) - cooling off period for patent oppositions (not in the public interest)
- dismissing trade mark oppositions for inadequately particularised grounds
- document service
- no changes to basis for adding grounds / particulars to a notice of opposition
- no change to costs provisions
- suspension regime for patent / trade mark attorneys will be retained
- customs seizure: regulations will be amended to require importers to provide full name, telephone number and address for service in ‘claim for release’ forms
- email address will not be made mandatory
- applicants for patents will have 2 months to respond to a direction to request examination after examination has been deferred
- acceptance period after 1st report on patent application has been issued will be reduced to 12 months
- “IP Australia will not require a statement of entitlement at filing for standard patents (or at national phase entry for PCT applications). Instead, the statement will be required when the applicant requests examination, as part of the approved form.” Applicants for an innovation patent will still need to provide the statement when filing the application
- The Commissioner / Registrar will retain discretion to decide whether hearings should be decided on the papers without oral presentation
- Apparently, there are technical corrections that will be implemented to
Links to:
Public Consultation Update papers
IP Australia’s helicopter summary of Raising the Bar, more links and IP Australia’s summaries for patents, copyright, trade marks and designs.
Patentology looks at the good news for SMEs and some of the things rejected, here.