Schedules 3 and 6 of the new law relate to new proceedings and cancellation of other proceedings with the objective of reducing delays in resolution of patent applications, and simplifying the patent system by removing procedural hurdles and streamlining processes.
The key changes relevant to examination, acceptance, opposition and re- examination practice are dealt with below.
Regulations to accompany these changes shorten the time frame for:
- acceptance (allowance) due date has been shortened from 21 months to 12 months from receipt of a first examination report, and
- due date for requesting examination has been shortened from 6 months to 2 months from receipt of a direction from the Patent Office to request examination.
Item 1 applies to all applications where a request for examination is made on or after 15 April 2013. Item 2 applies to all directions issued on or after 15 April 2013.
Prior use and usefulness at examination
The prior art base in Australia includes information made publicly available through doing an act (prior use) or publication anywhere in the world.
Under the new law applicable to applications for which examination is requested on or after 15 April 2013, the examiner is able to consider all prior art information when assessing novelty, inventive step (for standard patent applications), and innovative step (for innovation patents).
For other applications, the examiner is not able to consider prior use or usefulness during examination.
The new law also expands the patentability requirements considered during examination to include consideration of whether a claimed invention is useful.
This specialised examination proceedings that considers prior art grounds only has been cancelled because it was not extensively used. This means that for standard patents, ordinary examination is the only examination proceedings now available. This is consistent with the approach of most other patent offices.
Omnibus claims are claims that define the relevant subject matter by reference to description or figures or drawings contained in the patent specification.
Under the new law, claims cannot rely on reference to these things unless ‘absolutely necessary to define the invention’.
Clearly there will be some debate regarding the circumstances in which the carve-out will apply. It seems that one example where it would apply is where a chemical composition can only be described with reference to a spectroscopic profile.
Omnibus claims are not, under the new law, considered as inherently unclear, so it seems that there will be good reason to persuade the examiner that these claims are ‘absolutely necessary’ as required by the relevant subject matter, particularly given the difficulty in invalidating these claims in revocation proceedings.
The relevant provision applies to applications for which examination is requested on or after 15 April 2013.
Standard of proof for acceptance
For applications for which examination is requested on or after 15 April 2013, the examiner is to apply the civil standard of proof to all grounds of invalidity considered during examination. This is a departure from earlier practice whereby the balance of probabilities standard is to apply to prior art grounds and the benefit of the doubt standard is to apply to specification and patentable subject matter requirements.
Therefore, the key change is that it will be for the applicant to persuade the examiner that it is more likely than not that the specification satisfies grounds including patentable subject matter, enablement, support, written description, and clarity of claims.
Interestingly, the expectation of the legislature is that in practice, this new law should not impose any requirement on the Patent Office to conduct further enquiries during examination than are currently undertaken. Given this, our expectation is that if there is to be any observable difference in obtaining allowance, this will most likely be seen in second and further examination reports where the Patent Office will exercise the balance of probabilities standard on non-prior art grounds. In the circumstances, this would point to the continuing importance of building a convincing case of likelihood of validity on all grounds in response to a first examination report.
Revocation of acceptance
The new law will give an examiner the discretionary power to revoke acceptance. The relevant provision does not specify the circumstances in which the power may be exercised for revocation. The intention appears to be that acceptance is to be revoked where an administrative error has resulted in acceptance of an application that should not have been accepted. However, there is nothing in the legislation that limits exercise of the power to this circumstance. A separate provision sets forth that a decision to revoke acceptance cannot be appealed to the Federal Court.
Postponement of acceptance
Prior to the new law it was possible to postpone acceptance leaving applicants with opportunity to take advantage of the more generous amendment opportunities that are available before acceptance. A particular circumstance where postponement of acceptance has been useful is in the recent Patent Office divisional case management practice where in attempting to avoid a two-month response due date, the applicant files claims allowed on the parent patent and files a postponement of acceptance to prevent allowance of those claims in the divisional. With this rule change, whereby the office has discretion as to whether to allow acceptance to be postponed, it should be more important to make sure that the claims for a divisional application have been settled during the 2 month period available for requesting examination after a direction to request examination has issued.
Divisional applications and opposition
A range of amendments have been made to divisional application and opposition proceedings with the objective of resolving the delays in disputes before the Patent Office. The key amendments are as follows:
- cancellation of the opportunity to file divisional applications during an opposition - thereby preventing an applicant from effectively stepping around opposition proceedings once commenced,
- cancellation of the opportunity to convert a standard patent application to a divisional application of an earlier filed application during opposition proceedings – thereby preventing the applicant from avoiding earlier the application and other prior art by effectively amending the priority date of the claims,
- an option for the Patent Office to refuse a request by an applicant of an opposed application to withdraw the application. This may apply where the applicant does not also withdraw a divisional application of the opposed application, and
- introduction of two categories of opposition to be recognised, namely substantive (opposition to grant of patent or to patent term extension) and procedural (allowance of amendments and extensions of time).
Further changes to the regulations include the following:
For both substantive and procedural opposition
- All documents are to be filed with the Patent Office, eliminating the current requirement for service by one party on another, and the opportunity for one party to object to late service of documents on another.
- A higher threshold is to be met to obtain an extension of time for filing evidence.
- It is not possible to file evidence if the time for doing so has expired and the time is not extended.
- No mechanism is provided to request leave to submit further evidence, but the Patent Office may consult documents relevant to the opposition.
- Opponents are required to file summaries of submissions 10 days prior to hearing, and applicants are required to do same within 5 days.
For substantive opposition
- The due date for the opponent's evidence in reply is reduced from 3 months to 2 months.
- The opponent must file any documents to be relied upon on filing of the Statement of Grounds and Particulars. The Patent Office may dismiss the opposition if documents are not filed.
For procedural opposition
- The due date for commencing a procedural opposition by filing a Notice of Opposition is 2 months. This shortens the due date for an opposition to an amendment by 1 month, and extends the due date for an opposition to an extension of time by 1 month.
- The due date for filing a Statement of Grounds and Particulars is shortened to 1 month from the filing of a Notice of Opposition.
- The Patent Office has a discretion to direct, on a case-by-case basis the appropriate practice and procedures including directing evidential timeframes.
Most of the patent opposition changes apply to opposition proceedings commenced after 15 April 2013. The patent opposition changes apply to evidentiary periods and procedures commenced on or after 15 April 2013 for all existing opposition proceedings.
The new law changes the re-examination provisions so that the grounds of invalidity considered in the re-examination of a standard patent will accord with the grounds considered during substantive examination. Specifically, grounds in addition to novelty and inventive step will be able to be considered in re-examination including whether the claimed invention:
- is a manner of manufacture (ie patentable subject matter)
- is useful (ie having specific, substantial and credible utility, and meeting the promise of the invention)
- has been prior used
- is adequately described in and supported by the specification, and
- relates to human beings and/or processes for the generation of human beings.
In addition, it is proposed that the standard of proof in re-examination will be raised to the civil standard of balance of probabilities, (ie whether the Commissioner is satisfied that it is more likely than not that the relevant patent is valid on the relevant ground) which brings the standard of proof into line with that applied by the court.
Given that notions of substantial new question of patentability, likelihood of at least one claim being unpatentable, or likelihood that a petitioner would prevail on at least one claim are irrelevant as to whether re-examination may proceed, we expect that these proposed changes to re-examination should make re-examination a far more attractive option for attacking patents before the Patent Office. This is particularly the case given that a petitioner who has been unsuccessful in re-examination proceedings will not later be estopped from attacking the patent in revocation proceedings before the court.
Finally, the new law provides that re-examination of patents granted under pre amendment old law will now be assessed on prior art and non prior art grounds as they existed under the old law.