Synopsis  

IP Australia is proposing changes to Australian intellectual property (IP) law and practice in a series of reform papers entitled “Toward a Stronger and More Efficient IP Rights System,” slated for release during 2009. These papers claim to bring together ideas developed by IP Australia and recommendations from reviews of our innovation and IP systems. The first five papers in this series propose substantial legislative and procedural changes that would affect our standards of patentability, our available exemptions to infringement, our divisional patent filing practices, and the procedures for both patent oppositions and trade mark oppositions.

IP Australia is an agency of the Australian Government responsible for the administration of intellectual property legislation relating to patents, registered designs, trade marks and plant breeder's rights. On 27 March 2009, IP Australia called for written submissions in response to two consultation papers, entitled “Getting the Balance Right” and “Exemptions to Patent Infringement.” On 18 June 2009, three further papers were released, entitled “Resolving Divisional Applications Faster”, “Resolving Patent Opposition Proceedings Faster” and “Resolving Trade Mark Opposition Proceedings Faster.”  

The first four papers are directed to reform of the Australian patent system, while the fifth paper is directed to reform of the Australian trade mark system. It is expected that additional reform papers will be released later this year.  

The “Balance” paper contends that Australia has lower patentability standards than other jurisdictions such as Europe, Japan and the US, and proposes amendments to our legislation to bring these standards into “alignment”. It is proposed to increase the general requirements for patentability, and strengthen IP Australia’s ability to rigorously assess applications.The “Exemptions” paper refers to uncertainty surrounding potential infringement through use of patented inventions for experimentation purposes, and proposes legislative amendments to codify which acts are exempt. The “Exemptions” paper also contends that patentees have a de facto extension of term in respect of inventions that require regulatory approval, including non-pharmaceutical inventions, and proposes an expansion of the current pharmaceutical patent exemptions.  

The “Divisional”, “Patent Opposition”, and “Trade Mark Opposition” papers contend that there are too many delay mechanisms in the Australian patent and trade mark systems, and propose changes to reduce the periods of uncertainty that may be experienced by third parties before the registrability or validity of a trade mark or patent is determined by IP Australia.  

Increased Patentability Requirements – Disclosure  

In the “Balance” reform paper, IP Australia proposes to expand what must be disclosed in a patent specification to support a patent claim. Presently, a valid claim in Australia must be “fairly based” on matter described in the specification, and the specification must include a full description of the invention, including the best method of performing the invention. Furthermore, when determining a priority date, a claim must be fairly based on subject matter disclosed in the priority application. It has been determined that fair basis requirements are fulfilled when there is consistency between the claims and the invention described, and the full description requirements are met when a skilled person can produce something within each claim without “new inventions or additions or prolonged study of matters presenting initial difficulty”.  

IP Australia suggests that the US, Europe and Japan each require the specification to enable a skilled person to produce embodiments across the full scope of the invention claimed. IP Australia therefore proposes to introduce descriptive support requirements which, they contend, are analogous to those in other jurisdictions for determining the validity of a claim, and the claim's entitlement to a priority date. These new descriptive support requirements would include that the whole scope of the claimed invention be enabled and that the description provide sufficient information to allow the skilled addressee to perform the invention without undue experimentation.  

According to current case law, a specification can be validly amended to fulfil the full description and best method requirements at least until the date of grant of the patent. IP Australia proposes that these requirements be met at the filing date of the application.  

Increased Patentability Requirements – Inventive Step  

In the “Balance” paper, IP Australia proposes to raise the bar for patentability in Australia by increasing the threshold test for inventive step. Presently, inventive step is determined by considering the claimed invention in view of the common general knowledge in Australia, possibly in combination with one or more prior art references. Any such reference must be one that a skilled person could reasonably be expected to have ascertained, understood and regarded as relevant.  

IP Australia proposes to remove the requirement that the common general knowledge be limited to knowledge in Australia. IP Australia contends that this amendment more closely aligns our patent requirements with those of our major trading partners.  

According to another proposal, IP Australia wishes to remove the requirement that the skilled person be reasonably expected to have ascertained (i.e., found) a prior art reference before it can be considered relevant to the question of inventive step. IP Australia argues that this requirement does not explicitly exist in the United States, the United Kingdom, Japan or the European Patent Convention. This proposed change would make it more difficult to exclude prior art information from inventive step considerations on the basis that a skilled person could not reasonably be expected to have ascertained the information.  

IP Australia also proposes to introduce a specific test for obviousness which is intended to be applicable to all inventions. According to this test an invention would be considered obvious where it is “obvious for the skilled person to try a suggested approach, alternative or method with a reasonable expectation of success”. IP Australia has suggested in its paper that obvious-to-try inventions are not patentable in Europe and the US, and should not be patentable here.  

More Rigorous Assessment by the Patent Office  

In addition to increasing the requirements for patentability, the “Balance” reform paper proposes making the Office's assessment of applications and patents more rigorous by making the following changes: increasing the prior art information which can be considered during examination; examining for utility; extending the grounds which can be considered during re-examination; and making more decisions based on a balanceof- probabilities test rather than giving the applicant the benefit of any doubt.  

Information made publicly available through doing of an act (i.e., prior use) is proposed to be included in the prior art for the purposes examining novelty and inventive step. Presently, only prior documents can be considered during examination.  

Usefulness (or utility) is proposed to be considered as a ground during examination rather than merely as a ground for opposition and revocation. IP Australia also proposes to require that the requirement for usefulness is only satisfied if the patent specification discloses a specific, substantial and credible use for the invention.  

Re-examination presently occurs only for novelty and inventive step. IP Australia proposes expanding the grounds for reexamination to include all of the grounds considered during examination.  

Presently, a balance-of-probabilities test may be applied during examination of some patentability requirements, including inventive step, while other requirements are assessed by giving the patent applicant or patentee the benefit of the doubt. IP Australia proposes to legislate for use of the balance-of-probabilities test as the standard of proof required for all matters during examination, re-examination and opposition.  

IP Australia contends that this is the standard in the US, the UK and Europe, and argues that such an approach will result in fewer Office decisions being overturned by the courts.  

Explicit Exemptions to Infringement  

In the “Exemptions” paper, IP Australia proposes legislative amendments to codify exemptions to infringement for experimental use. Specific exemptions are proposed for acts performed, on a patented invention, for testing a claim and for seeking an improvement to the invention. “Testing” a claim relates to testing the validity of a patent, determining the scope of the patent claims, and determining whether an act or product infringes a patent claim. Seeking an improvement to the invention is intended to be limited to “research use” of the invention and not commercial exploitation.  

Furthermore, IP Australia proposes an exemption to infringement for acts that are solely for the purpose of obtaining information for regulatory approval under Australian law, or under the law of any other country that regulates the manufacture, construction, use or sale of the patented invention. Presently, this exemption exists only in relation to pharmaceutical patents.  

In the “Exemptions” paper, IP Australia mentions that reports by the Australian Law Reform Commission (ALRC) and the Australian Advisory Council on Intellectual Property (ACIP) have recommended the inclusion of explicit exemptions to infringement. It appears, however, that the current proposed amendments differ substantially from these recommendations. For example, ACIP's recommendation for experimental use was drafted in light of the general safeguard against exemptions to infringement under Article 30 of the international Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).  

Divisional Applications  

Divisional applications can be filed in Australia for a number of reasons: to divide out separate inventions identified during examination (along the lines of a US divisional application), to pursue claims based on the original subject matter (similar to a US continuation application), to include new subject matter (similar to a US continuation-in-part), and to effectively extend the period for examination (similar a US request for continued examination). The parent case can itself be a divisional, thus allowing for a family of cases to relate to a common ancestor.  

In the “Divisional” paper, IP Australia states that the vast majority of divisional applications filed in Australia are not resolved until well after their priority dates, and argues that such delays are unproductive and unfair to other users of the patent system and to the public. IP Australia proposes changes in its internal procedures for handling divisional applications, as well as legislative changes to limit the filing of divisional applications.  

Presently, examination of an application need only occur following a direction to request examination from IP Australia, a process that may take some years. With the aim of resolving divisional applications more quickly, IP Australia proposes that a direction to request examination of a divisional application be issued at the same time as the direction to request examination of any family member, or shortly following filing of the divisional application itself. Furthermore, any examination of a divisional application would be prioritised in IP Australia's work flow. In addition, IP Australia proposes that, for divisional applications that contain the same claims as their parent, or essentially continue arguments that previously led to an impasse during examination, the case be considered for a hearing by IP Australia to accelerate resolution of the matter.  

The “Divisional” paper indicates that divisional filings are frequently used during patent opposition proceedings for strategic purposes. Divisional applications can presently be filed until grant of the parent application, and an application can be amended to become a divisional application as long as it was filed before the grant of the parent. IP Australia proposes to curtail this practice by limiting the period for filing a divisional application and for converting to a divisional application. Furthermore, IP Australia proposes that an opposed application can only be withdrawn if the Commissioner grants leave for the withdrawal, thus limiting the purportedly common practice of withdrawal of the parent following filing of a divisional application.

Patent and Trade Mark Opposition Proceedings  

In the “Patent Opposition” and “Trade Mark Opposition” papers, IP Australia proposes substantial amendments to the procedures that are followed during opposition proceedings, particularly in relation to the time available to take certain actions.  

For trade marks, under IP Australia's proposals, fewer grounds would be available for extending the period to initiate a trade mark opposition, and allowable amendments to the notice of opposition would be limited. The opponent would be required to file particulars of their grounds of opposition (i.e., the material facts on which each ground is based) with the notice of opposition, and if the particulars are not filed, the opposition would be dismissed. Also, if the applicant does not file a notice of intention to defend their mark, their application would lapse. To replace existing extension-of-time provisions, a “cooling-off” period would be introduced to allow negotiations; the cooling-off period would be available after initiation of the opposition, but only accessible with the ongoing agreement of all parties and the Registrar.  

For patents, the time available for initiation of an opposition would be reduced for procedural patent matters, such as allowance of amendments. The evidentiary stages would be removed for procedural patent matters, and brought forward for other matters. A party would be able to file a notice that it does not intend to rely on evidence, and the period available for filing that evidence would then expire. The period for serving evidence in reply, the final stage, would be reduced. The Federal Court, during an appeal from an opposition, would be empowered to consider and direct amendment of an application at the request of the patent applicant: this proposal is intended to remove restrictions on the Court that have ostensibly led to delays and costs in appeal cases.  

For both patents and trade marks, extensions of time for serving evidence would only be available in compelling circumstances, not including delays by a legal representative or for negotiating a settlement. Further evidence would not be accepted, although documents could still be provided to IP Australia for their consideration, and the power to summon witnesses or require the production of documents would be reduced: IP Australia contends that these provisions have caused considerable delays in the past, and the evidence produced has rarely been crucial, and has generally not been particularly relevant. Shortly before the hearing of the opposition, a written summary of submissions would be required from both sides.  

WHAT WILL HAPPEN TO THESE PROPOSALS?  

Although some of the reform proposals from IP Australia aim to bring Australian legislation into closer alignment with major international jurisdictions, the extent to which foreign law has been analysed in developing these proposals is open to question. It is also unclear whether the proposed limitations to oppositions and divisional filings will result in fair and high quality IP rights. It is clear, however, that the proposals do not follow all of the recommendations of the ALRC and ACIP. These and other issues are being addressed in submissions from the Institute of Patent and Trade Mark Attorneys of Australia (IPTA), the Law Council of Australia, and FICPI Australia. The patent and trade mark groups of Davies Collison Cave are also considering the proposed changes with a view to filing our own submissions, and/or assisting with the submissions from the other bodies.