Australia’s intellectual property laws will undergo major reform in April 2013, with the goal of better aligning the quality of granted patents with those of major trading partners, such as the USA and Europe. However, in some respects the reforms are selective, with the result that interested parties could, in the future, find themselves severely disadvantaged.

Less Time to Prepare Evidence

In a drive to reduce the overall length of the patent opposition process, the Patent Office is taking steps to make it more difficult to obtain extensions of time to file evidence.

Evidence in Australian patent oppositions usually takes the form of declarations from technical experts. The purpose of expert evidence is to attest to the state of the art, the common general knowledge and the teaching of prior art references. Under current practice the Patent Office will rarely consider any information that does not form part of expert evidence. Extension of time requests during opposition are, for the most part, a necessity associated with the difficulty in procuring expert evidence. This takes time, is expensive, and is typically not at the control of the patent applicant, the opponent or their respective representatives. Most experts have many other commitments.

Presently, it is not known how the tightening of extension of time requests will operate in practice. However, given the reliance on expert evidence, it is likely that both applicant and opponent will need to move far more quickly in order to formulate their respective positions. There may well be situations where a party is unable to properly assemble evidence due to a lack of time. This could lead, at worst, to the grant of patents of dubious validity or the rejection of patents that were possibly acceptable. There may be a bias towards parties with deep pockets.

Perhaps, as part of the current reforms, IP Australia missed an opportunity to implement a more far reaching measure by relaxing the reliance on expert evidence. This would have definitively addressed the length of opposition proceedings, their related cost, and met the overarching intention of the changes to bring Australian standards and practices in line with similar proceedings overseas.

Changing the Prior Art Base for Testing Inventive Step

A key element of the reforms is the change to the test for inventive step. The test will be altered to involve consideration of common general knowledge of the person skilled in the art anywhere in the world, not just in Australia. Furthermore, the requirement that prior art be ‘ascertained, understood and regarded as relevant’ will be abolished, thus broadening the range of documents that can be raised for inventive step.

These changes mean that it will be harder to demonstrate an inventive step exists and accordingly the level of inventiveness required for a patent will increase.

These changes should bring Australia’s inventive step test more in line with that of other major trading partners, and the new approach should be beneficial in opposition proceedings, where the validity of a patent claim is challenged.

A key focus of expert evidence in opposition is on inventive-step and common general knowledge. Since it will no longer be necessary to establish that a piece of prior art could have been ‘ascertained, understood and regarded as relevant’, reliance on expert declaratory evidence could be diminished. Patent attorneys and the Patent Office alike should be better placed to respectively submit and appraise a case for validity or invalidity in all but the most technically complex of cases. Such a change in practice would put the shorter timelines for opposition firmly in the hands of the applicant, the opponent and their representatives, resulting in much faster preparation of submissions.

Of course, this reflects the European approach to opposition practice, where the interested party’s representatives generally make submissions in opposition.

Australia Should Adopt a More European Style Opposition Procedure

The Opposition Divisions and Technical Boards of Appeal of the European Patent Office decide opposition cases based on their own technical expertise. There is no requirement or necessary reliance on expert testimony. The law does allow the commission of an expert, if required. But in practice, the submission of evidence by appointing a technical expert is rarely ordered ex officio. However, the parties may present their own private experts, who may submit their analysis in writing. IP Australia is raising the bar in respect of patent quality by modifying the test for inventive step to be more like that of major trading partners. It would seem appropriate to also modify opposition practice to relax the requirement for expert testimony in relation to common general knowledge and inventive step, and therefore align that aspect of opposition procedure with that of other major trading partners.

Alas, given the upheaval that the Australian patent system is undergoing, it seems unlikely that any further major reforms will occur in the near future. Therefore, interested parties will have to manage the shorter times frames within which to compile expert evidence as best they can. We await IP Australia’s practice in regard to extensions of time with interest.