Now that we have made it past the March 16, 2013 effective date of the first-inventor-to-file provisions of the America Invents Act, it is time to turn our attention to Australia, and the April 15, 2013 effective date of the Intellectual Property Laws Amendment (Raising the Bar) Act.

Raising The Bar

The Raising The Bar Act will impose stricter substantive requirements, including:

  • Adopting a global view of “common general knowledge” that can be used to support an inventive step (obviousness) rejection.
  • Requiring an application to disclose a “specific, substantial, and credible use” for the invention.
  • Requiring the description to be “clear enough and complete enough” for a skilled person to perform the invention.
  • Replacing the “fair basis” rule for written description with a requirement that the claims be “supported by the matter disclosed” in the application as filed.

Many of the new standards are drawn from U.S. and EPO practice, and are aimed at making the threshold requirements for obtaining a patent comparable to those of the U.S., EPO and JPO.

Getting In Under The Bar

Applications for which a Request for Examination is filed on or after April 15, 2013 will be examined under the new law. Thus, in order to obtain examination under current Australian patent law, both the application and Request for Examination must be filed by Friday, April 12, 2013. Stakeholders who are concerned about these changes might consider filing Requests for Examination in pending applications, and filing new applications (including national stage applications) with a Request for Examination, all within the next few weeks.

New Infringement Exceptions

The Raising The Bar Act included two new infringement exceptions which took effect on April 16, 2012.

  1. Regulatory Use Exemption: Exempts from infringement all activities necessary to obtain regulatory approval for non-pharmaceutical products (e.g., agricultural chemicals, medical devices). (Activities necessary to obtain regulatory approval for pharmaceutical products already were exempted by provisions similar to 35 USC § 271 (e)(1))
  2. Experimental Use Exemption: Exempts from infringement “work done for experimental purposes relating to the subject matter of the invention,” such as “determining the properties of the invention; determining the scope of a patent claim relating to the invention; improving or modifying the invention; determining the validity of the patent or of a patent claim relating to the invention, and determining whether the patent for the invention would be, or has been, infringed by the doing of an act.”