Beware of the former search result requirement

Peter John Ward v Embrey Attachments and The Stanley Works [2008] APO 17 (12 June 2008) related to a Section 223 extension of time within which to comply with section 45(3). Although the need to file search results was abolished in October 2007, this decision is a reminder that the requirement still exists for those cases (albeit a small number) where the search results were completed before 22 April 2007, and examination was requested before 22 April 2007 and the application was advertised as accepted before 22 July 2007. If the former search result requirement is not complied with, then it will affect a patentee’s ability to amend by reason of section 102(2C).

In this case there was a third party request for re-examination under section 97(2) in respect of prior art raised in EP and US. This art was material that should have been brought to the attention of the Patent Office by the Patentee. The Australian re-examination report found that claims 1-5 and 7 were not novel and claims 6, 8-11 lacked an inventive step based on a number of these documents.

In response to the re-examination report, the Patentee proposed a number of amendments noting that these were for the purpose of overcoming the Examiner’s objections regarding lack of novelty and inventive step. The examiner granted leave to amend without recognizing that the amendments might not be allowable under section 102(2C). Fortunately for the Patentee, it was not possible for the Commissioner to review or reverse this decision to consider the implications of section 102(2C). Whilst in this particular case the Patentee was able to provide a full and frank disclosure to establish a causative error to enliven section 223 and thereby extend the time in which to file the search results, the outcome would have been disastrous for the Patentee if section 223 did not apply and the Examiner has refused the amendments by reason of section 102(2C).