As noted in our February 2002 Newsletter, Australia amended its law in 2002 to require that applicants disclose prior art known to them to the Patent Office during the pendancy of patent applications. Compliance with the law as worded was difficult and representations were made that there were easier ways to achieve the desired objective than those set out in the legislation. As a consequence, since it was expected that the legislation would be amended, the Australian Patent Office extended the transitional deadline within which to disclose search results in a pending patent application from the original date of June 1, 2003 to February 1, 2004. The expected legislative change has now been made. Accordingly, only prior art searches that have been carried out by other patent offices for the purpose of assessing the patentability of the invention in question will have to be disclosed to the Australian Office. Furthermore, it will in general suffice to provide a list of the art cited. There are, however, two exceptions to this: if there has been a search carried out by the European or British Patent Offices, it will be necessary to indicate the degree of relevance that those patent offices attributed to the cited art. It will not normally be necessary to provide copies of the actual documents themselves.

Results from such search reports must be submitted by the later of six months from completion of the search in question or six months from the date of requesting examination.

The date for submission of information in cases where these dates have already passed was February 1, 2004.