Service in focus

By Declan McKeveney

Recent changes to the Patents and Trade Marks Acts in April 2013 involve changes in procedural matters as well as substantive law. Here we summarise some of the main procedural changes for you to be aware of.

Patents

  • Shortened time period for requesting examination after receiving a Direction from the Commissioner on or after 15 April 2013. The time period allowed will be reduced from 6 months to 2 months.
  • Shortened time period in which to achieve acceptance after receiving a first examination report (FER). The new time period will be 12 months from the date of the FER for any standard patent application for which examination was requested on or after 15 April 2013. It is important to note this is an acceptance (allowance) deadline and not merely a response deadline.
  • A statement of entitlement must be provided to the Commissioner at the time of requesting examination for the request to be considered valid when requesting examination on or after 15 April 2013.
  • A divisional application must be filed within 3 months of the date of acceptance of the parent application. Filing a new divisional or converting an existing application into a divisional application will no longer be possible after this date.
  • In substantive opposition proceedings it will be important to be diligent in meeting the evidence deadlines as the new regulations require any party requesting an extension of time to show they made all reasonable efforts to meet the deadline and acted promptly and diligently at all times. It will be important not to rely on the obtaining of any extensions of time for submission of evidence.

Trade Marks

  • A Notice of Intention to Oppose to commence an opposition must be filed within the shortened period of 2 months from the date of advertisement of acceptance.
  • A Statement of Grounds and Particulars on which the trade mark is being opposed is now required to be filed within 1 month of the Notice of Intention to Oppose.
  • A Notice of Intention to Defend opposition proceedings is now required from the Applicant to avoid lapsing of the trade mark.
  • Extensions of Time to serve evidence will now be far more difficult to obtain, as discussed for patents.

It will be important to keep these changes in mind moving forward. Overseas practitioners may notice that it will be more difficult to delay prosecution of patent applications in Australia until determinations on validity are received in the home jurisdiction.