Austrailia Abolishes Duty of Disclosure for Patent Office Searches While U.S. IDS Proposal Faces Challenges at OMB

Thanks to Bill Bennett at Pizzeys [BBennett@Pizzeys.com.au] for pointing out that the duty of disclosure has now been abolished in Australia with regard to the results of documentary searches by, or on behalf of, foreign patent offices, except where:

(a) normal exam was requested prior to April 22nd, 2007, and
(b) the foreign patent office search issued prior to April 22nd, 2007, and
(c) acceptance (allowance) was officially advertised prior to July 22nd, 2007.

The amendment regulations will also "allow notices of matters affecting the validity of a standard patent to be filed up to three months from the date of advertisement of acceptance of an application." According to the four-page Notice from the Australian Intellectual Property Office:

As a result of the generally favourable nature of the feedback received [on a consultation paper], the Patents Regulations 1991 (Cth) have been amended to substantially remove the requirement to inform the Commissioner of Patents (the Commissioner) of the results of documentary searches by, or on behalf of, foreign patent offices. The amending legislation, the Patents Amendment Regulations 2007 (No. 1) (Cth), commences on 22 October 2007.

Learn more about "what is required" from F B Rice & Co, and get more, official IP news from down under here.

The USPTO's proposed rule changes on Information Disclosure Statements, currently under review by the President's Office of Management and Budget, seem to be heading in the opposite direction:

• Changes To Information Disclosure Statement Requirements and Other Related Matters (10 July 2006) [PDF]
• Executive Summary [PDF], Detailed Summary [PDF]
• Slides:
  IDS NPR (html version)(zip version), The Four Time Periods for Submitting an IDS and Their Corresponding Requirements (html version)(zip version), Application Prosecution Timeline (html version)(zip version)
• Comments from Public

Cantor Fitzgerald's David Boundy is leading the fight by 29 parties to challenge these proposals at OMB, while a second challenge has been filed by Richard B. Belzer on behalf of undisclosed clients.