How to keep a secret: prohibition orders on patents

/ Bill McFarlane / Articles

Patent applications are normally published, and the information in them made publicly available, eighteen months from the earliest priority date. However, the patent system in Australia empowers the Government to deem a patent as SECRET, in which case publication of any of the details of the patent is prohibited until such time as the ‘prohibition order’ is rescinded.

In Australia, the Commissioner of Patents can order the prohibition of publication of all information in relation to a patent application and from that point IP Australia will not make any information about the filing public. The mechanism for invoking the order can vary; typically the Department of Defence will make a request to impose a prohibition order in respect of a particular patent application. Alternatively, IP Australia may consider that a patent application discloses information that may be SECRET according to the Department of Defence information classification system. IP Australia will then make that application available to the Department of Defence for assessment and, if any part of that disclosure meets the relevant criteria, a prohibition order is placed on the application.

Once a prohibition order is placed on an application it will be dealt with in accordance with the requirements of the Act. An Examiner with security clearance will examine the specification to determine whether it is in order for allowance, and then issue an Examination Report or a Notice of Allowance if allowable. However, from that point on the application is suspended in the application phase and is not processed further. Furthermore, whilst the prohibition order remains in place, publication or communication of any of the subject matter of the patent application is prohibited or restricted, thereby effectively preventing commercialisation of the invention.

The period of the prohibition order may be as long as the potential life of the patent, in which case the patent will never be enforceable. However, once the Department of Defence no longer considers the information secret the prohibition order can be rescinded and the patent application is placed into the normal patent system by being advertised accepted and then published in the usual way. If there is a commercial application of the previously classified patent, it will then be possible to exploit the value of the patent during its remaining life.

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IP Australia Announces New Fourth Year Patent Renewal

/ Bill McFarlane / Important Updates

As part of the 2012 Federal Budget, the Australian Government has approved changes to IP Australia’s fees, including standard patent renewal fees. The new fee structure will apply from 1 July 2012.

Prior to the changes, annual renewal or maintenance fees for standard patents and pending applications were not payable until after the 5th anniversary of the filing date.

From 1 July 2012, renewals will become payable on standard patents and applications from the 4th anniversary of filing. The official government fee for the 4th year renewal will begin at AU$300. Our usual renewal service charge will apply. You will be receiving renewal reminder letters in due course with total renewal costs.

The new renewal fee will only apply to standard patents and applications having an effective filing date on or after 1 July 2008. As this is a significant change to IP Australia’s practice regarding renewals, we are providing this notice to you in advance of this new fee being introduced.

If you would like to know about any of IP Australia’s other proposed fee increases please contact us for further information.

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Intellectual Property Laws Amendment (Raising the Bar) Act 2012: changes to the Trade Marks Act

/ Madderns / Important Updates

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law by the Australian Parliament on 15 April 2012. The provisions of the new laws will come into force on 15 April 2013. Changes to the Trade Marks Act primarily involve the opposition and customs seizure provisions of the Act, as outlined below.

Opposition Period

The opposition period is to be shortened from 3 months to 2 months.

Notice of Opposition

The Notice of Opposition will merely need to be filed with the Trade Marks Office and it is likely to be a simple form stating that a party opposes registration of a trade mark.

Statement of Grounds and Particulars

One month after filing the Notice of Opposition, the Opponent must lodge a statement of grounds and particulars detailing each ground of opposition and the particulars on which the Opponent intends to rely.

Notice of Intention to Defend

Within one month of the statement of grounds and particulars, an Applicant will need to file a Notice of Intention to Defend the opposition. Failure to file the Notice will result in the trade mark application lapsing in opposition proceedings.

Periods for lodging evidence

The time frames for the parties to prepare and serve their evidence are expected to be reduced.

Customs seizure provisions

A trade mark owner will have the ability to access multiple samples of seized goods, to remove such goods for inspection and the importer must make a claim for return in order to have the seized goods returned.


The Trade Marks Act will include provisions for additional damages in infringement proceedings, bringing the Trade Marks Act into line with the Copyright Act.

Presumption of registrability

Section 41 will be repealed and replaced to clarify that the presumption of registrability, as provided for under Section 33, does apply to section 41.

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Intellectual Property Laws Amendment (Raising the Bar) Act 2012: changes to the Patents Act

/ Madderns / Important Updates

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law by the Australian Parliament on 15 April 2012. Some of the provisions of the new laws came into force on 15 April 2012 and the remainder will come into force on 15 April 2013.

The following infringement exemptions came into force on 15 April 2012.

Experimental use

An act done for experimental purposes relating to the subject matter of the invention will not be considered as an infringement of a patent. Examples of such acts include determining the properties of the invention, determining the scope of a claim relating to the invention, improving or modifying the invention, determining the validity of the patent, and determining whether the patent for the invention has been infringed.

Regulatory approval

The current infringement exemptions will be extended to non-pharmaceuticals, so that acts in obtaining regulatory approval for such subject matter in Australia or under the law of another territory will not be considered to constitute patent infringement.

The following changes aimed to increasing the threshold for patent validity will come into force on 15 April 2013. Under the transitional provisions, if a Request for Examination is filed prior to 15 April 2013 the application will not be subject to these new requirements.

Inventive and innovative step

The test for inventive step and innovative step will be expanded to include common general knowl- edge anywhere in the world. Furthermore, for inventive step considerations prior art information will no longer need to have been ‘ascertained, understood and regarded as relevant’ by the skilled person.


A specification will need to disclose a ‘specific, substantial and credible use for the invention’.

Fair Basis

Fair basis will be replaced with a requirement that the claims be ‘supported by matter disclosed in the specification’ which is expected to result in the scope of patent rights being narrower than has previously been the case.


Specifications for both provisional and complete patent applications will need to be ‘clear enough and complete enough’ for a skilled person to perform the invention. This is a higher disclosure level for provisional patent specifications than the previous requirement that the application describe the invention in general.

Revocation of acceptance

The Commissioner may revoke acceptance of an application.


The current relatively liberal amendment provisions will be tightened to prevent applicants adding subject matter that was not disclosed in the specification as filed, except when the amendment is to correct an obvious mistake or clerical error.

Modified examination

The option of modified examination, based on a corresponding patent granted in a foreign country, will no longer be available.

Omnibus claims

Unless absolutely necessary to define the invention, omnibus claims will not be allowed.


The privilege provisions of the Patents Act have been extended to specifically include communica- tions with foreign patent attorneys.

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