Those familiar with foreign patent prosecution would know that, in comparison to what has become ‘conventional’ practice in the patent prosecution field, assessed mainly at the hand of the provisions of the (Patent Cooperation Treaty (PCT) and the practice followed by the European Patent Office (EPO), the patent law of those ‘down under’ has had certain peculiarities. It can be argued that these peculiarities resulted therein that, measured against the prior art, a lower standard of patent was likely to be granted by IP Australia (which includes the Australian patent office) than would have been the case in some other countries, and particularly at the EPO.
Without going into too much detail, and by way of example only, the following two patent provisions, that are to be phased out, can be used as illustration of the abovementioned peculiarities:
- In contrast to ‘conventional’ practice, the practice of IP Australia in assessing the inventiveness of an invention has been restricted by a so-called ‘geographical limitation’, according to which inventiveness is assessed against that which is “common general knowledge in Australia”. Thus, for prior art to be relevant in assessing inventiveness, that prior art must, essentially, have existed in Australia prior to the priority date of the relevant invention.
- Also in contrast to ‘conventional’ practice, the body of prior art that may be taken into consideration when assessing inventiveness was limited to that which would be “ascertained, understood and regarded as relevant” by a person skilled in the art of a particular invention for which a patent is desired. In other words, reliance on prior art falling outside the field of application of a concerned invention and that could be shown would not have been regarded by a person skilled in the art as relevant to the concerned invention, was impermissible.
Clearly, the abovementioned limitations reduced the body of prior art citable against an invention, consequently lowering the patentability standard of some patents granted by IP Australia. Although this may be perceived by applicants and patentees to be a favourable situation, considering that a patent of broader scope may be obtained in Australia than elsewhere, one could argue that considerations of international uniformity should prevail. This is particularly relevant when using the PCT in pursuing patent protection, considering that the search reports and opinions compiled at PCT level (particularly when negative) may leave a PCT applicant with a higher level of doubt as to his chances of success in countries, such as Australia under their old act, which apply a different patentability standard than that which was applied during the PCT international phase.
The Intellectual Property Laws Amendment Act 2012, nicknamed the “Raising the Bar Act” (the Act), now brings Australia’s patentability standard to a level that is comparable to that of the ‘conventional’ practice. In particular, the Act removes the geographical limitation mentioned above. The Act also removes the abovementioned restriction that prior art relied on in challenging inventiveness may only be that which the skilled person would have “ascertained, understood and regarded as relevant” to the concerned invention. In other words, inventiveness is now assessed in Australia at the hand of a broader body of prior art, comparable to that of the ‘conventional’ practice.
It can be argued that (but remains to be seen whether) the changes brought about by the Act to the assessment of inventiveness would not necessarily, in practice, prevent an applicant from raising or render moot arguments that could be raised under the unamended act, provided that such arguments do not challenge the formal citability of the prior art under the provisions of the unamended act, but rather the relevance and/or usefulness of their teachings. It would certainly be difficult for an examiner to sustain an argument of obviousness where a prior art reference would clearly not have been useful to a person skilled in the art and would not have been “ascertained, understood and regarded as relevant” by such a person, notwithstanding an explicit teaching in such a reference of an integer or feature of the concerned invention. Any argument addressing the merits of an obviousness objection, regardless of its nature, may therefore still be sustainable.
Another change brought about by the Act, is that the standard of disclosure required from a complete Australian specification is reworded, requiring the disclosure in the specification to be “sufficiently clear and complete for a person skilled in the art to be able to perform the invention on the basis of the content of the specification”. This rewording is in itself not as significant as another change that relates to it: that the same standard will now be applied to priority applications. In other words, an applicant will not be able to secure a priority date on the basis of a priority application the specification of which does not describe the invention to which it relates in a manner which enables a person skilled in the art to perform the invention on the basis of the content of the specification. This change is significant in that it differs from the standard set by the South African Patents Act, requiring that a priority application (particularly a South African provisional specification) only needs “fairly (to) describe the invention” and that the subject matter disclosed in a subsequent South African complete patent application needs only to be “fairly based” on the matter disclosed in the priority application in order for the priority claim to be valid. The South African Patent Act does not emburden priority applications with a standard of enablement. South African practitioners drafting provisional specifications for provisional applications that may later be required to serve as priority applications for Australian applications should therefore be cautious not to have their approach dictated solely by South African legislation; they should be mindful of this change to Australian legislation.
A final change that should be given attention to, also being relevant to South African practitioners, is removal of the requirement that claims should only be “fairly based” on the matter disclosed in a complete specification (which subsists in the South African Patents Act). Instead, the amendments made by the Act now require claims to be “fully supported” by the specification. Whether or not this can be equated to the standard applied by the EPO remains to be seen. Regardless, practitioners should exercise caution not to expect that they would routinely be able to rely on broad generalised statements in a specification to provide basis for more specific claims.
It is heartening to see that, hot on the heels of the US Patent Office, the Australian Patent Office has also taken this step to bringing their patent law into a more universal form, thereby to create more certainty and coherence in international patent prosecution.