Before 15 April 2013, patent applicants had long enjoyed the ‘benefit of the doubt’ in relation to many aspects of the review of applications conducted by the Patent Office of IP Australia.

For example, the questions of whether a patent application related to eligible subject matter, under the ‘manner of manufacture’ test, whether the invention was useful, and whether the claims were clear, concise and ‘fairly based’ on the description in the patent specification, were all to be decided in favour of the applicant in the event of any doubt.  Prior to 2002, the same benefit also applied to the crucial decision as to whether a claimed invention was new, and involved an inventive step.

The applicant enjoyed a similar position during contested opposition proceedings, with the Patent Office being obliged to allow an opposed application to proceed to grant unless it were practically certain that the resulting patent would be invalid.  This significant onus of proof upon the opponent also applied in the case of an appeal of an opposition decision to the Federal Court.

So what has changed, exactly?

With the commencement of the Raising the Bar reforms on 15 April 2013, the standard to be applied across-the-board in Patent Office decision-making has become the ‘balance of probabilities’ test.

Determinations of validity made by the Patent Office to which the ‘balance of probabilities’ now applies include:

  • acceptance of a standard patent application;
  • refusal of a standard patent application, following opposition:
  • refusal of a standard patent application, or revocation of a patent;
  • issuing a Certificate of Examination of an innovation patent, or revocation of the patent;
  • revocation of an innovation patent following re-examination;
  • revocation of an innovation patent following opposition;
  • revocation of acceptance of a patent request for a standard patent; and
  • revocation of certificate of examination under.

What does this mean?

The new standard applies to all applications and patents filed on or after 15 April 2013, as well as those filed earlier, if a request for examination had not yet been filed before 15 April 2013.  As a result, the Patent Office has a greater ability to raise and maintain objections to such applications.  Additionally, it will be less difficult for parties wishing to challenge the grant of a patent through the opposition process to do so successfully.