Commonwealth Consolidated Regulations Commonwealth Consolidated Regulations(1) For paragraph 45 (3) (a) of the Act, the following documentary searches by or on behalf of a foreign patent office are prescribed (so that information need not be given to the Commissioner):
(a) for any application -- a search that produces a nil result;
(b) if the application is a PCT application -- a search that results in an International Search Report and any additional search conducted during the international preliminary examination;
(c) if the application ( application A ) is an application which the applicant is permitted to make under subsection 79B (1) of the Act ( a divisional application ):
(i) a search, the result of which was disclosed under subsection 45 (3) of the Act in relation to the first‑mentioned application for application A under subsection 79B (1) of the Act ( application B ); and
(ii) if application B is also a divisional application -- a search, the result of which was disclosed under subsection 45 (3) of the Act in relation to the first‑mentioned application under subsection 79B (1) of the Act for application B.
Note Under subsection 79B (1) of the Act, if a complete patent application for a patent is made, the applicant may make a further complete application for a patent for an invention:
(a) disclosed in the specification filed in respect of the first‑mentioned application; and
(b) where the first‑mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal -- falling within the scope of the claims of the accepted specification.
In paragraph (c), application A is the 'further complete application' mentioned in subsection 79B (1) of the Act. It is described in paragraph (c) as a 'divisional application'. Application B is the 'first‑mentioned application' in relation to application A. If results of searches have been disclosed in the course of application B, the results do not need to be disclosed again in the course of application A.
However, it is possible under subsection 79B (1) of the Act that application B may also be a divisional application in relation to another application. In that case, there will also be a first‑mentioned application for application B. If results of searches have been disclosed in the course of that first‑mentioned application, the results do not need to be disclosed again in the course of application A.
(d) if the application is an application for a patent of addition under Chapter 7 of the Act -- a search, the result of which was disclosed under subsection 45 (3) of the Act in relation to the application for the main invention;
(e) a search, other than a search by or on behalf of the European Patent Office or the UK Patent Office, the result of which:
(i) has already been given to the Commissioner under subsection 45 (3) of the Act in relation to the application; or
(ii) was contained in the International Search Report;
(f) a search, the result of which was not received by the applicant.
(2) If:
(a) under subsection 45 (3) of the Act, an applicant was required to inform the Commissioner of the result of a documentary search by or on behalf of a foreign patent office in relation to a patent request; and
(b) the applicant did not inform the Commissioner of the result before 22 October 2007; and
(c) the latest of the following dates had not occurred before 22 October 2007:
(i) the day 6 months after the documentary search is completed within the meaning of regulation 1.3A;
(ii) the day 6 months after the applicant asked for the examination in accordance with section 44 of the Act;
(iii) if the patent request and complete specification relating to the application were accepted (whether before or after 22 October 2007) -- the day 3 months after the notice of acceptance was published in the Official Journal under paragraph 49 (5) (b) of the Act;
the documentary search is prescribed (so that information need not be given to the Commissioner).
(3) If:
(a) an applicant asked, in accordance with section 44 of the Act, for an examination of the patent request and complete specification relating to the application for a standard patent; and
(b) the applicant asked for the examination on or after 22 October 2007;
all documentary searches by, or on behalf of, a foreign patent office are prescribed (so that information need not be given to the Commissioner).