The Australian patent and other IP laws are set to undergo their most significant change in a number of years. The Intellectual Property Laws Amendment (Raising the Bar) Act passed into law on 15th April 2012, and the majority of the provisions will come into effect on 15th April 2013.

The changes will affect trademark, design, plant breeders' rights and copyright law, but most notably patent law.

The Raising the Bar legislation affects six areas:

  • It raises the quality of granted patents by altering the tests for patentability to increase their alignment with equivalent tests in other jurisdictions.
  • It provides free access to inventions for experimental use (previously available through common law) and regulatory approval (previously available only for pharmaceutical inventions).
  • It reduces delays in the resolution of patent and trademark applications by altering procedures for opposition and patent divisional applications.
  • It revises the operational provisions for Australian patent and trademark attorneys.
  • It improves the mechanisms for trademark and copyright enforcement.
  • It simplifies the IP system to ensure that it is easier to use.

The provisions relating to a regulatory use exemption from patent infringement for non-pharmaceutical patents and an experimental use exemption from infringement came into force on 15th April 2012.

Raising the quality of granted patents
The following changes are designed to raise the quality of granted patents and to bring Australian law into line with that of other jurisdictions:

  • The test for inventive step 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 that an inventive step exists, and accordingly the level of inventiveness required for a patent will increase.
  • The level of disclosure required in a patent specification will increase so as to allow the person skilled in the art to produce the invention across the full scope of each claim. Currently, the law requires that the person skilled in the art be able to produce one embodiment within the scope of the claim.
  • Amendment to a patent specification will be allowed only if the amendments do not go beyond the scope of the specification as filed. Currently, extra supporting data can be added and amendments beyond the scope of the specification as filed can be made so long as the claims are not broadened in scope. Amendments to correct clerical errors or obvious mistakes will still be permitted, despite the changes to the amendment provisions.
  • Patent applications will need to disclose a specific, substantial and credible use of the invention.
  • The requirement for fair basis will be replaced with a requirement that the claims be fully supported by the description. 
  • Examination will include consideration of usefulness and prior use.
  • Higher standards of proof will apply in prosecution and opposition.
  • Modified examination (based on a granted equivalent patent) will no longer be available.
  • A patent application must be placed for acceptance within 12 months of the first official report, rather than the current 21 months. This will apply for all cases on which a first report issues on or after 15th April 2013.
  • A request for examination must be filed within two months of a direction to do so from IP Australia, rather than the current six months. This will apply for all cases in which a direction issues on or after 15th April 2013.

Given that the substantive changes to patentability will apply to any patent application for which examination has not been requested by 12th April 2013, applicants should consider requesting examination in Australia early to ensure that their patents are examined under the current examination standards. Furthermore, any pending Patent Cooperation Treaty applications should be reviewed and the national phase entered early with a concurrent examination request filed if the applicant wishes to take advantage of the current provisions.

Changes to procedural steps in oppositions
The following are some of the more significant changes proposed by the regulations. The regulations have not yet been finalised; however, it is likely that most of the changes will be implemented as suggested in the draft regulations:

  • Removal of requirement for parties to serve evidence on each other – IP Australia will take over the responsibility and thus abolish the opportunity for parties to object that evidence was not received by the deadline. This applies in patent, trademark and design matters.
  • Introduction of a fast-track process for procedural oppositions.
  • Requirement that documents to be relied on in a patent opposition be provided with the statement of grounds and particulars.
  • Introduction of a higher threshold to obtain an extension to serve evidence.
  • Prescription of statutory timelines for filing submissions before an opposition hearing.
  • Requirement that trademark opponents file a statement of grounds and particulars early in the process, so that the applicant understands the case that it has to answer.
  • Introduction of a cooling-off period in trademark oppositions to allow negotiations to occur.
  • Introduction of a notice of intention to defend, which must be filed by a trademark applicant if it wishes to maintain and defend its application.

It will become necessary to progress opposition procedures more rapidly in Australia to avoid the need to apply for extensions. Extensions will be far more difficult to obtain. The transitional provisions that will affect existing oppositions in this respect are still under discussion.

Changes to divisional patent application provisions
A divisional application must be filed no later than three months after acceptance of the parent application. It will no longer be possible to file a divisional application as a response to opposition to the parent.

Trademark and copyright enforcement
It will be easier for a trademark and/or copyright owner to inspect goods seized under a notice of objection and to obtain details of the importer. 

Simplifying the IP system
The following changes should make the system easier to use:

  • Omnibus claims in patents, including references to the description or drawings. will no longer be permitted unless absolutely necessary to define the invention.
  • A patent can no longer be found invalid merely because it was granted to a person who was not entitled to it.
  • Postponement of acceptance of a patent application will be at the commissioner’s discretion (currently automatic on request).

The new legislation to be implemented will change the interaction with IP Australia in many ways and, in particular, will result in granted patents having a higher presumption of validity.

Further details on these changes can be found at IP Australia’s website (www.ipaustralia.gov.au).

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.