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Australia ‘raises the bar’ for patentees


9th Jan 2013

The recently enacted Intellectual Property Laws Amendment (Raising the Bar) Act 2011 implements a number of significant changes to Australian patent law. The Act will come into force on 15th April 2013.

In addition to procedural changes, the main aim of the Act is to improve the quality of granted patents, for example by raising the required standards for the inventive step, sufficiency and added matter tests. The law also removes the option of basing examination of Australian applications on a granted foreign patent (the “modified examination” procedure), and will impose stricter time limits on when divisional applications can be filed.

While the changes are not expected to have a drastic effect for the majority of applicants in Australia, for certain cases it may be more difficult to obtain patent protection in Australia after April 2013 than before.

Summary Of Major Changes

The following is not intended to be a comprehensive review of the changes, merely a summary of the main points. If you wish to confirm how your applications could be affected by the law change, please contact your usual R&G advisor for more information.

Inventive Step

Under the new law, some documents which previously would have been disregarded for inventive step will now be considered. The current approach to inventive step includes the limitation that a prior art document would only be considered if “a skilled person…could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, [and] regarded [the document] as relevant…”. Thus, if the prior art document was particularly obscure, or existed in an unrelated technical field, it would likely not be considered for inventive step purposes.

The Raising the Bar Act removes this limitation, potentially expanding the number of documents that could be used by the Patent Office or Opponent in an inventive step attack. However, explanatory guidelines issued alongside the Act explain that, in spite of the deletion, a normal assessment of inventive step will still require a consideration of whether a skilled person would have understood and regarded as relevant a particular prior art document. It remains unclear whether the assessment of inventive step will now consider how likely it was that a skilled person would have found a document.

Another change to inventive step is the removal of the territorial requirement on common general knowledge – it will no longer be necessary to show information was common general knowledge in Australia (as opposed to elsewhere). This is likely to make it easier for third parties to oppose patents, as it may no longer be necessary to call Australian experts.

Sufficiency

The Raising the Bar Act brings Australian law on sufficiency more into line with corresponding provisions in the UK (which are similar to European provisions). The specification must “disclose the invention in a manner which is clear enough and complete enough for an invention to be performed by a person skilled in the relevant art”. An explanatory memorandum indicates that the subject matter of a claim should be sufficiently disclosed across its “whole width”. It is as yet unclear exactly how the Australian IPO and courts will interpret these provisions.

Added Matter

The Raising the Bar Act introduces provisions to prohibit amendments that add subject matter compared to the application as filed. This also brings Australian law more into line with the UK and Europe.

Removal Of Modified Examination

Under the new law, it is no longer possible to request “modified examination. Modified examination allows an applicant to short circuit examination in Australia and request grant based on the text of an equivalent patent granted in Canada, Europe, New Zealand, the UK or the US. Accordingly, if you wish to take advantage of an equivalent granted patent, it will be necessary to request modified examination prior to the 15th April 2013 deadline.

Whether or not it is advisable to request modified examination should always be assessed on a case-by-case basis. There are some drawbacks to using the modified examination procedure, in particular because the foreign granted patent (especially the claims) is unlikely to be in a form that is suitable for Australian practice. We strongly recommend seeking advice before deciding whether modified examination is appropriate for a given case.

Divisional Filing Deadlines

Under the current law, a divisional application may be filed up to the date of grant of the patent, or for divisional applications that claim subject matter falling outside the scope of the claims accepted in the parent, three months from the pre-grant acceptance date.

As the Australian opposition procedure takes place after acceptance but pre-grant, under the current law the applicant can file divisional applications (for subject matter falling within the scope of the parent claims) during the opposition procedure.

Under the new law, the deadline for filing any divisional application (irrespective of its subject matter) is 3 months from advertisement of acceptance of the parent. This means that it will no longer be possible to file a divisional application based on an opposed parent application.

Implementation Dates & Avoiding The New Law

The new law comes into effect on 15th April 2013, and in general will apply to applications filed on or after that date, as well as to pending applications for which an examination request has not yet been filed by that date. As a practical matter, because 15th April 2013 is a Monday, new applications and examination requests will need to be on file by Friday, 12th April 2013 (which due to time differences will mean instructing an Australian attorney by Thursday, 11th April 2013).

As set out above, there may be scenarios where it is preferable for applications to be examined under the old law (e.g. where modified examination is required, or where you are aware of obscure prior art). In order to avoid the new law in such cases, for pending unexamined applications you must request examination prior to 15th April 2013; and for inventions for which no Australian application has been filed, you must file an Australian application (or enter the Australian national phase of an International application) before 15th April 2013, and request examination on filing.

In addition, in view of the more restricted opportunity to file divisional applications, for any allowed Australian applications that are presently undergoing opposition, where a divisional application is required, it must be filed before 15th April 2013.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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