Background

In April this year significant changes to the Patents Act 1990 (Cth) (The Act) were introduced under the ‘Raising the Bar’ Act that brought with it changes including higher inventive step standards, a broader prior art base, procedural changes in patent examination and tougher timelines for opposition proceedings. Trade marks too were impacted, although those changes were mostly confined to opposition proceedings. 

Immediately before 15 April 2013 on which date most changes came into effect, the Australian Patent Office experienced an unprecedented frenzy of patent examination request filings in an attempt to have cases examined under the old, and more lenient Act. Eight times more examination requests were filed in the month of April than normal, leaving a backlog of 60,000 unexamined patent applications pending at the Patent Office as of September 2013. About half of these are pre-Raising the Bar cases. The average time for an examination report to issue has risen and is currently at about 18 months from requesting examination.

Examination reports under the new Act

Examination reports are beginning to be issued under the new Act. So far we have not seen a significant change in how inventive step objections are being expressed, nor have we seen many ‘utility’ objections raised under the new “lack of utility” ground of objection. What we have noticed is an increase in the number of objections on the basis of sufficiency and support for claim amendments, with these two grounds of objections being used interchangeably. Patent examiners are looking for a literal basis in the originally filed specification that enables the full claim scope, and where that literal basis is not found, the claim amendments are rejected for being speculative and travelling beyond the scope of the description. 

This tougher standard for support and sufficiency echoes aspects of European patent law. If an amendment is supported and sufficiently disclosed in the specification as judged under European standards, it should also be found to meet the new Australian standards. More than ever, care should be taken when drafting patent specifications to make sure all features are properly described with the support of multiple specific examples of alternatives.

Changes to patent examination costs

There is the potential under the recent changes for patent applicants to receive a costly surprise during the examination procedure in Australia. Currently, the cost of requesting patent examination is either AU$490 or AU$300, depending on whether the Australian Patent Office issued a related IPRP. In preparing their reports, Australian Patent Examiners tend to rely on search work conducted on a corresponding Patent Cooperation Treaty (PCT) application or by foreign Patent Offices on foreign counterpart applications. However, where no related search has been conducted and the Australian examiner is required to carry out a full search, the Patent Office can now impose a new search fee of AU$1400 in addition to the current exam fee for a standard patent application. (This fee does not apply to innovation patents). It is understood that this requirement has not yet been implemented but is expected to be soon, and will particularly affect applicants filing only in Australia. 

Patent and trade mark oppositions – new requirements

Teething problems are being experienced with changes to patent and trade mark oppositions. The new requirement for trade mark Opponents to file a Statement of Grounds and Particulars has seen the Trade Marks Office delete grounds of opposition that were not sufficiently particularised. For both patents and trade marks, there has been a strong push back on allowing extensions of time to file evidence. Unless a party can show that they acted promptly and diligently, and made all reasonable efforts to file the evidence, an extension of time will not be granted.

One strategy sought to be used by Patent Applicants to extend the time period for filing evidence during oppositions involves requesting amendments of the claims, and seeking a stay of the deadline for submitting their evidence. If a stay is granted, this can provide a free extension of time for completing the evidence of about 3 months duration. Whilst this strategy has been successful during early stages after commencement of the new law, the Patent Office is now only granting a stay where it is shown that the amendments will significantly change the nature of the evidence required to be submitted. It is also necessary, when requesting the stay, to demonstrate that evidence has been, and will continue to be, obtained promptly and diligently.