Records Authority 2015/00253477

IP Australia

Patents Rights Management; Trade Mark Rights Management

2015

This is an accurate reproduction of the authorised records authority content, created for accessibility purposes

Introduction

IP Australia and the National Archives of Australia have developed this Records Authority to set out the requirements for keeping or destroying records for the core business areas of Patent Rights Management and Trade Mark Rights Management. It represents a significant commitment on behalf of IP Australia to understand, create and manage the records of its activities.

This Authority is based on the identification and analysis of the business of IP Australia. It takes into account the agency's legal and organisational records management requirements, and the interests of stakeholders, the agency and the National Archives of Australia.

The Authority takes account of the Intellectual Property Laws Amendment Act 2015 effective from 25 February 2015. This Act amended the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003, and the Plant Breeders Rights Act 1994 to repeal document retention provisions that were otherwise coverable by Archives permissions issued under the Archives Act 1983.

The Authority supersedes classes relating to Patents Rights Management and Trade Marks Rights Management in Records Authority 2004/00068493. 51 classes that were linked to previous Patents and Trade Marks legislative retention requirements of 25 years have been amended to reduce the minimum retention periods.

The Authority sets out those records that need to be retained as national archives and specifies the minimum length of time that temporary records need to be kept. This Authority gives IP Australia permission under the Archives Act 1983, for the destruction of the temporary records described after the minimum retention period has expired. Retention periods for these temporary records are based on: an assessment of business needs; broader organisational accountability requirements; and community expectations, and are approved by the National Archives of Australia on the basis of information provided by the agency.

As changes in circumstances may affect future records management requirements, the periodic review of this Authority is recommended. All amendments must be approved by the National Archives.

Application of this Authority

  1. This Authority supersedes classes 7935, 7936, 7937, 7938, 7944, 7945, 7946, 7947, 7953, 7954, 7955, 7958, 7959, 7962, 7963, 7964, 7965, 7966, 7967,7968, 7969, 7974, 7975, 7976, 7986, 7987, 7988, 7990, 7991, 7992, 7993, 7995, 7996, 7997, 7998, 8007, 8008, 8009 and 8010 relating to Patents Rights Management and classes 8018, 8019, 8020, 8027, 8035, 8036, 8037, 8044, 8055, 8058, 8059 and 8068 relating to Trade Marks Rights Management in Records Authority 2004/00068493. These superseded classes cannot be used after the date of issue of this Authority.
  2. This Authority is to be used to determine how long records must be kept. Records are matched to the relevant core business and records class in the Authority.
    • Where the minimum retention period has expired and the records are not needed for agency business they should be destroyed as authorised in this Authority.
    • Records that have not reached the minimum retention period must be kept until they do.
    • Records that are identified as Retain as National Archives (RNA) are to be transferred to the National Archives of Australia for preservation.
  3. This Authority should be used in conjunction with general records authorities such as:
    • AFDA Express which covers administrative business processes and records common to many Australian Government agencies;
    • General Records Authority 24 – Records Relating to Data Matching Exercises; and
    • General Records Authority 31 for source (including original) records that have been copied, converted or migrated.
  4. The Normal Administrative Practice (NAP) provision of the Archives Act 1983 gives agencies permission to destroy certain records without formal authorisation. This usually occurs where records are duplicated, facilitative or for short-term use only. NAP does not replace arrangements agreed to in this Authority but can be used as a tool to assist in identifying records for destruction together with an agency’s Records Authority or Authorities, and with AFDA and AFDA Express. The National Archives recommends that agencies develop and implement a Normal Administrative Practice policy. Advice and guidance on destroying records as a normal administrative practice and on how to develop an agency NAP policy is available from the National Archives’ website at www.naa.gov.au.
  5. Records that are reasonably likely to be needed as evidence in a current or future judicial proceeding or are subject to a request for access under the Archives Act 1983, the Freedom of Information Act 1982 or any other relevant Act must not be destroyed until the action has been completed.
  6. Records subject to a disposal freeze must not be destroyed until the freeze has been lifted. Further information about disposal freezes and whether they affect the application of this Authority is available from the National Archives website at www.naa.gov.au.
  7. Where the method of recording information changes (for example from a manual system to an electronic system, or when information is migrated from one system to a new system) this Authority can still be applied, providing the records document the same core business. The information must be accessible for the period of time prescribed in this Authority. The agency will need to maintain continuing access to the information, including digital information, for the periods prescribed in this records authority or until the information is transferred into the custody of the National Archives.
  8. In general, retention requirements indicate a minimum period for retention. IP Australia may extend minimum retention periods if it considers that there is an administrative need to do so, without further reference to the National Archives. Where IP Australia believes that its accountability will be substantially compromised because a retention period or periods are not adequate, it should contact the National Archives for review of the retention period.
  9. Records coming within ‘Retain as national archives’ classes in this Authority have been determined to be part of the archival resources of the Commonwealth under Section 3C of the Archives Act 1983. The determination of Commonwealth records as archival resources of the Commonwealth obliges agencies to transfer the records to the National Archives when they cease to be current and, in any event, within 15 years of the records coming into existence, under Section 27 of the Archives Act 1983.
  10. Records in the care of agencies should be appropriately stored, managed and preserved. Agencies need to meet this obligation to ensure that the records remain authentic and accessible over time. Under Section 31 of the Archives Act 1983, access arrangements are required for records that become available for public access including those records that remain in agency custody.
  11. Appropriate arrangements should be made with the National Archives when records are to be transferred into custody. The National Archives accepts for transfer only those records designated as national archives.
  12. Advice on how to use this Authority is available from the agency’s records manager. If there are problems with the application of the Authority that cannot be resolved, please contact the National Archives.

Contact Information

For assistance with this authority or for advice on other records management matters, please contact National Archives' Agency Service Centre.

Queen Victoria Terrace
Parkes ACT 2600

PO Box 7425
Canberra Mail Centre ACT 2610

Email: recordkeeping@naa.gov.au
Website: www.naa.gov.au

Authorisation

Person to whom notice of authorisation is given:

Patricia Kelly
Director-General
IP Australia
Discovery House
47 Bowes Street
Phillip ACT 2606

Purpose:

Authorises arrangements for the disposal of records in accordance with Section 24(2)(b) of the Archives Act 1983.

Determines records classed as ‘Retain as national archives’ in this Records Authority to be part of the archival resources of the Commonwealth under Section 3C of the Archives Act 1983.

Application:

All core business records relating to Patents Rights Management; and Trade Mark Rights Management.

Authorised by:

David Fricker
Director-General
National Archives of Australia

17 September 2015

Patents Rights Management

The function of processing applications for the granting of patents. Includes reviewing and deciding disputed matters relating to the granting or refusal of patent rights; maintaining a register of patents; providing advice on the application of patents legislation, World Intellectual Property Organization matters pertaining to patents, and on other international and bilateral patent matters. Also includes activities of processing Patent Cooperation Treaty applications such as Receiving Office, International Searching Authority and International Preliminary Examination Authority activities; examining patent applications and undertaking international searches on behalf of other countries and undertaking commercial searches.

Records Authority 2004/00068493 includes classes associated with the following activities for PATENTS RIGHTS MANAGEMENT: Appeals (decisions); Authorisation; Awarding Costs; Compliance; Examination; Extension of Time; Hearings; Initial Processing; Process Suspension; Referring; Register Maintenance; Reporting; Rights Granting and Searching.

This Authority supersedes classes 7935, 7936, 7937, 7938, 7944, 7945, 7946, 7947, 7953, 7954, 7955, 7958, 7959, 7962, 7963, 7964, 7965, 7966, 7967, 7968, 7969, 7974, 7975, 7976, 7986, 7987, 7988, 7990, 7991, 7992, 7993, 7995, 7996, 7997, 7998, 8007, 8008, 8009 and 8010 relating to Patents Rights Management. These classes cannot be used after the date of issue of this Authority.

Cross references to AFDA Express Records Authority

For responses to ministerial and responses to questions raised in Parliament about patent rights and patent issues, use GOVERNMENT RELATIONS

For processing fees, use FINANCIAL MANAGEMENT

For publishing official journal notices, use PUBLICATION

For engagement of legal service providers, use LEGAL SERVICES

Cross references to other records authorities

For the implementation of marketing and education strategies and programs to raise the awareness about patents rights and patent issues, use INTELLECTUAL PROPERTY AWARENESS

Class no Description of records Disposal action
61754

Records documenting agency involvement in proceedings concerning standard/ petty patents before a court or tribunal where the proceedings do not deal with questions relating to invalidation or revocation of part or all of a patent or with appeals of the Commissioner’s decision. Includes:

  • notices of appeal or applications to the court or tribunal;
  • correspondence with legal service providers;
  • correspondence with parties to the proceedings; and
  • court orders or tribunal decisions.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61755

Records documenting agency involvement in proceedings concerning a standard/ petty patent applications before a court or tribunal (including appeals of decisions of agency employees) that are withdrawn before the court issues an order or makes a judgement or the tribunal issues a decision. Includes:

  • notices of appeal or applications to the court or tribunal;
  • correspondence with legal service providers; and
  • correspondence with parties to the proceedings.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61756

Records documenting agency involvement in proceedings concerning innovation patents before a court or tribunal (including appeals of decisions of agency employees) that are withdrawn before the court issues an order or makes a judgement or the tribunal issues a decision. Includes:

  • notices of appeal or applications to the court or tribunal;
  • correspondence with legal service providers; and
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61757

Records documenting agency involvement in proceedings concerning innovation patents before a court or tribunal where the proceedings do not deal with questions relating to invalidation or revocation of part or all of a patent or with appeals of the Commissioner’s decision. Includes:

  • notices of appeal or applications to the court or tribunal;
  • correspondence with legal service providers;
  • correspondence with parties to the proceedings; and
  • court orders or tribunal decisions.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61759

Records documenting the handling of requests for claims for costs of proceedings before an agency employee relating to standard/ petty patents, or standard/petty applications. Includes:

  • requests for claim for costs;
  • correspondence with parties;
  • review costs decisions;
  • submissions concerning proposed claims for costs; and
  • claim for costs certificates.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61760

Records documenting the handling of requests for claims for costs of proceedings before an agency employee relating to standard/ petty patents, or standard/petty applications. Includes:

  • requests for claim for costs;
  • correspondence with parties;
  • review costs decisions;
  • submissions concerning proposed claims for costs; and
  • claim for costs certificates.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61761

Records documenting agency compliance with agreed standards relating to the patent rights management function. Includes employees’ standard/petty patent check sheets.

For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61762

Records documenting agency compliance with agreed standards relating to the patent rights management function. Includes employees’ innovation patent check sheets.

For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61763

Records documenting the handling of examination processes for standard/petty patents that have not resulted in far-reaching social change or technological breakthrough, and are not of significant historical interest. Includes:

  • requests for examination;
  • directions to request examination;
  • requests to defer examination;
  • examination reports;
  • responses to examination reports;
  • requests to amend completed specifications;
  • clear reports;
  • patent abstract work sheets;
  • notices detailing reasons for refusal; and
  • requests to postpone acceptance.

(Date range: 1936 - )

For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61764

Records documenting the handling of examination processes for extension of term for pharmaceutical patents. Includes:

  • requests for extension of term;
  • requests to withdraw applications;
  • notices requesting further information;
  • further information supplied; and
  • notices accepting or refusing applications for the extension of term.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer
61765

Records documenting the handling of examination processes for innovation patents that have not resulted in far-reaching social change or technological breakthrough, and are not of significant historical interest. Includes:

  • requests for examination;
  • examination reports;
  • responses to examination reports;
  • requests to amend completed specifications;
  • clear reports;
  • patent abstract work sheets;
  • notices detailing reasons for revoking innovation patents;
  • notices advising that the invention is patentable and that a certificate of examination is to be issued; and
  • examination certificates.

(Date range: 2001 - )

For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61766

Records documenting the handling of applications for extension of time relating to standard/petty patents or filing of the standard/ petty patent applications. Includes:

  • applications for extension of time application;
  • invitations to pay;
  • requests for further information;
  • notices of applications;
  • pro-forma to allow or advertise extension of time;
  • objections to granting the extension of time;
  • decisions to grant or refuse the extension of time; and
  • notices advising of decisions to grant or refuse the extension of time.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61767

Records documenting the handling of applications for extension of time relating to innovation patents. Includes:

  • applications for extension of time patent application;
  • invitations to pay;
  • requests for further information;
  • notices of applications;
  • pro-forma to allow or advertise extension of time;
  • objections to granting the extension of time;
  • decisions to grant or refuse the extension of time; and
  • notices advising of decisions to grant or refuse the extension of time.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61768

Records documenting requests to issue notices to supply documents or issue summonses concerning proceedings relating to standard/ petty patents or standard/ petty applications. Includes:

  • requests for notices to produce documents or issue summonses;
  • correspondence;
  • signed and sealed notices;
  • requests to extend the time to comply with the notice; and
  • notices contesting the notice to supply documents.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61769

Records documenting the handling of ex-parte proceedings before an agency employee relating to standard/ petty patents or standard/ petty patent applications where the decision is not reported in the official journal. Includes:

  • correspondence with parties;
  • evidence; and
  • submissions in lieu of appearing in person.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61770

Records documenting the handling of opposition and hearing proceedings before an agency employee relating to standard/ petty patent applications where the decision is not reported in the official journal. Includes:

  • correspondence with parties;
  • statements of grounds and particulars;
  • evidence; and
  • submissions from parties in lieu of appearing in person.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61771

Records documenting the handling of opposition and hearing proceedings before an agency employee relating to innovation patents where the decision is not reported in the official journal. Includes:

  • correspondence with parties;
  • statements of grounds and particulars;
  • evidence; and
  • submissions from parties in lieu of appearing in person.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61772

Records documenting the handling of ex-parte proceedings before an agency employee relating to innovation patents where the decision is not reported in the official journal. Includes:

  • correspondence with parties;
  • evidence; and
  • submissions in lieu of appearing in person.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61773

Records documenting the handling of requests to issue notices to supply documents or issue summonses concerning proceedings before an agency employee relating to innovation patents. Includes:

  • requests to issue notices to produce documents or summonses;
  • correspondence;
  • signed and sealed notices;
  • requests to extend the time to comply with the notice; and
  • notices contesting the notice to supply documents.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61774

Records documenting the handling of requests for orders for security of costs concerning proceedings before an agency employee relating to innovation patents. Includes:

  • requests for security costs orders;
  • correspondence with parties;
  • orders; and
  • details of compliance with orders.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61775

Records documenting the handling of requests for orders for security of costs concerning proceedings before an agency employee relating to standard/ petty patents. Includes:

  • requests for security costs orders;
  • correspondence with parties;
  • orders; and
  • details of compliance with orders.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61776

Records documenting receipt of standard/ petty patents applications that have not resulted in far-reaching social change or technological breakthrough, and are not of significant historical interest. Includes:

  • covering letters;
  • patent requests;
  • complete specifications;
  • notices of entitlement;
  • requests for examination;
  • priority documents;
  • formalities letters to applicant identifying deficiencies; and
  • applicants responses.

(Date range 1936 - )

For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61777

Records documenting receipt of provisional patent applications. Includes:

  • covering letters;
  • patent requests; and
  • specifications.
Destroy 10 years after expiry of granted/certified patents, expiry/lapse of patent applications that are not granted/certified, or action completion, whichever is applicable and longer.
61778

Records documenting receipt of innovation patent applications that have not resulted in far-reaching social change or technological breakthrough and are not of significant historical interest. Includes:

  • covering letters;
  • patent requests;
  • descriptions of inventions;
  • claims and drawings;
  • notices of entitlement;
  • requests for examination;
  • priority documents;
  • formalities letters to applicant identifying deficiencies; and
  • applicants response.

(Date range: 2001 - )

For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61779

Records documenting the suspension of agency processing of standard/ petty patents or standard/ petty patent applications that are open for public inspection. Includes records documenting lapsing or withdrawal of applications and records documenting cessation, revocation, surrender or expiry of patents.

For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61780

Records documenting the suspension of agency processing of standard/petty patent applications that are not open for public inspection. Includes records documenting withdrawal or lapsing of applications.

For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61781

Records documenting the suspension of agency processing of innovation patents or innovation patent applications. Includes records documenting lapsing or withdrawal of applications and records documenting cessation, revocation, surrender or expiry of patents.

For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61782

Records documenting prohibition orders for standard/ petty patent applications. Includes:

  • correspondence with government agencies concerning classification of applications;
  • notices advising applicants and attorneys to refrain from publishing or divulging information until advice received;
  • advice from government agencies concerning classification of applications;
  • directions to prohibit or restrict publication;
  • Prohibition Orders; and
  • action sheets.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61783

Records documenting revocation of prohibition orders on standard/petty patent applications. Includes de-classification notices and signed revocation orders.

For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61784

Records documenting issue of prohibition orders for innovation patent applications. Includes:

  • correspondence with government agencies concerning classification of applications;
  • notices advising applicants and attorneys to refrain from publishing or divulging information until advice received;
  • advice from government agencies concerning classification of applications;
  • directions to prohibit or restrict publication;
  • Prohibition Orders; and
  • action sheets.

For lapsing innovation patent applications, use PATENT RIGHTS MANAGEMENT - Process Suspension.

For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61785

Records documenting revocation of prohibition orders on innovation patent applications. Includes de-classification innovation notices and signed revocation orders.

For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61786

Records documenting the handling of requests received from people to modify details of standard/petty patents entered on the register of patents. Includes:

  • requests to renew standard/petty patents;
  • requests to modify details entered on the register; and
  • requests to record claims of interest.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61787

Records documenting the handling of requests received from people to modify details of innovation patents entered on the register of patents. Includes:

  • requests to renew innovation patents;
  • requests to modify details entered on the register; and
  • requests to record claims of interest.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61788

Records documenting the development of reports on problematic standard/ petty patent cases. Includes:

  • requests for reports;
  • working papers application; and
  • final reports.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61789

Records documenting the development of reports on problematic innovation patent cases. Includes:

  • requests for the report;
  • working papers; and
  • final reports.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61790

Records documenting the sealing of standard/petty patents and issuing duplicate sealed standard/petty patents that have not resulted in far-reaching social change or technological breakthrough, and are not of significant historical interest.

(Date range: 1936 - )

Destroy 10 years after expiry of patents, or action completion, whichever is longer.
61791

Records documenting the sealing of innovation patents and issuing a duplicate sealed innovation patents that have not resulted in far-reaching social change or technological breakthrough and are not of significant historical interest.

(Date range: 2001 - )

Destroy 10 years after expiry of patents, or action completion, whichever is longer.
61792

Records documenting the handling of search processes for standard/petty patent applications, excluding working papers. Includes:

  • search strategies;
  • search results;
  • cited documents; and
  • search reports.
For granted patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not granted, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.
61793

Records documenting the handling of search processes for innovation patents, excluding working papers. Includes:

  • search strategies;
  • search results;
  • cited documents; and
  • search reports.
For certified patents, destroy 10 years after expiry, or action completed, whichever is longer. For patent applications that are not certified, destroy 5 years after application ceases, expires or lapses, or action completed, whichever is longer.

Trademark Rights Management

The function of processing applications for the registration of trade marks. Includes considering and deciding disputed matters relating to the granting or refusal of trade mark rights; maintaining the Register of Trade Marks; providing advice on application of the trade marks legislation, World Intellectual Property Organization matters pertaining to trade marks, and on other international and bilateral trade mark matters.

Records Authority 20014/00068493 includes records classes associated with the following activities for TRADE MARK RIGHTS MANAGEMENT: Appeals (decisions); Awarding Costs; Hearings; Initial Processing; Register Maintenance; Reporting and Rights Granting.

This Authority supersedes classes 8018, 8019, 8020, 8027, 8035, 8036, 8037, 8044, 8055, 8058, 8059 and 8068 relating to Trade Marks Rights Management in Records Authority 2004/00068493.These classes cannot be used after the date of issue of this Authority.

Cross references to AFDA Express Records Authority

For responses to ministerial and responses to questions raised in Parliament about trade mark rights and trade mark issues, use GOVERNMENT RELATIONS

For processing fees, use FINANCIAL MANAGEMENT

For publishing official journal notices, use PUBLICATION

For engagement of legal service providers, use LEGAL SERVICES

Cross references to other records authorities

For the implementation of marketing and education strategies and programs to raise awareness about trade mark rights and trade mark issues, use INTELLECTUAL PROPERTY AWARENESS.

For trade mark policy development, including legislative development and international and regional activities to influence the development of the international trade marks system, use INTELLECTUAL PROPERTY DEVELOPMENT.

Class no Description of records Disposal action
61794

Records documenting agency involvement in proceedings concerning registered trade marks or protected international registrations before a court or tribunal (including appeals of decisions of agency employees). Includes:

  • notices of appeal;
  • notices of applications;
  • correspondence with legal service providers;
  • correspondence with parties to the proceedings; and
  • court orders or tribunal decisions.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61795

Records documenting agency referral to a court of applications to remove registered trade marks from the register or applications to remove protected international trade marks from the record of international registrations for non-use. Includes:

  • notices to parties that the Registrar intends to refer non-use applications to a court;
  • correspondence with the court;
  • court orders; and
  • notices advising the international bureau of the court’s decision.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61796

Court orders concerning registered trade marks or protected international registrations where the agency is not a party to proceedings. Includes notices advising the international bureau of the court’s decisions.

Destroy 10 years after registration expires, or action completion, whichever is longer.
61797

Records documenting claims for costs of proceedings relating to registered trade marks or protected international trade marks. Includes:

  • requests for costs;
  • correspondence with parties;
  • review cost decisions;
  • submissions concerning the proposed claims for costs; and
  • claims for costs certificates.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61798

Records documenting the handling of opposed applications to remove registered trade marks from the register or applications to remove protected international trade marks from the record of international registrations for non-use. Includes:

  • notices of opposition;
  • correspondence;
  • evidence;
  • decisions of the matter on the written record; and
  • submissions.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61799

Records documenting orders for security of costs relating to registered trade marks or protected international trade marks. Includes:

  • requests for security of costs orders;
  • correspondence with parties;
  • orders for security of costs; and
  • details of compliance with orders.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61800

Records documenting requests to issue notices to supply documents or issue summonses concerning proceedings relating to registered trade marks or protected international trade marks. Includes:

  • requests for notices to produce documents or issue summonses;
  • correspondence;
  • signed and sealed notices;
  • requests to extend the time to comply with notices; and
  • notices contesting the notice to supply documents.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61801

Records documenting receipt of applications for international trade marks based on Australian registered trade marks or Australian trade mark applications that proceed to registration. Includes:

  • international trade mark applications;
  • formalities letters to applicants identifying deficiencies;
  • applicants responses; and
  • notices transmitting certified international trade mark applications to the international bureau.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61802

Records documenting the suspension of agency processing of registered trade marks or protected international trade marks. Includes:

  • requests to cancel registered trade marks;
  • applications to remove trade marks from the register for non-use;
  • notifications from the international bureau of non-renewal of international trade marks; and
  • advice of final decisions to the international bureau to cease protection of protected international trade marks.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61803

Records documenting the handling of court orders or requests received from people to modify details of trade marks entered on the register of trade marks or protected international trade marks entered on the record of international registrations. Includes:

  • renewal requests;
  • requests to modify details entered in the register;
  • requests to record claims of interest; and
  • court orders.
Destroy 10 years after registration expires, or action completion, whichever is longer.
61804

Records documenting the development of reports relating to registered trade marks or protected international trade marks. Includes final reports.

Destroy 10 years after registration expires, or action completion, whichever is longer.
61805

Records documenting processes of providing notices that trade marks have been registered or that international trade marks are protected. Includes:

  • certificates of registration and notices to applicants advising registration;
  • letters of protection and notices to a holder of a protected international trade mark; and
  • notices of address for service in Australia from holders of protected international trade marks.
Destroy 10 years after registration expires, or action completion, whichever is longer.
Copyright National Archives of Australia 2017