Australia’s Raising the Bar IP law reforms have created a system that makes oppositions quicker and delivers greater certainty.

Australia has a long-standing pre-grant patent opposition procedure.

However, a number of aspects were reformed as part of the IP Laws Amendment (Raising the Bar) Act 2012, Australia's largest Intellectual Property system overhaul in 20 years. The reforms came into full effect on 15 April 2013.

The net result has seen the pre-grant patent opposition procedure become a more useful tool for challenging the validity of standard patent applications.

It’s led to a process that is quicker and delivers greater certainty in tighter timeframes, as well as the potential to knock out patent applications of questionable validity.

Strict time-frames for evidence

In the past, patent opposition proceedings in Australia often became protracted due to generous provisions relating to extensions of time for lodging evidence. As a result of the Raising the Bar reforms, this is no longer the case.

Evidentiary time periods are still extendable, but the regulations relating to extensions of time for evidentiary periods are now reasonably onerous and strictly applied by IP Australia. Unless a party can show that they acted promptly and diligently, and made all reasonable efforts to file the evidence in time, an extension will not be granted.

The procedure from filing the Notice of Opposition to the issuance of a written decision on validity can now be completed within about 18 months, although extensions of time (where allowed), amendments and procedural disputes can extend this time-frame.

Lower burden of proof

Previously, in order to succeed in opposing grant of an Australian patent it was necessary for an opponent to establish that the patent, if granted, would be clearly invalid.

Now an opponent need only satisfy the Hearing Officer on the balance of probabilities that a ground of opposition to the grant of the standard patent is made out.

Stronger grounds for opposition

In respect of standard patent applications which are filed on or after 15 April 2013, or for which examination is requested after this date, there are four substantive changes that strengthen the grounds for challenging validity:

1. Broader prior art base for inventive step (obviousness)

Firstly, the background “common general knowledge” is no longer confined to that which existed in the art in Australia. In practice, this removes the need to use local Australian experts or otherwise prepare evidence in order to establish that the relevant art is ‘international’ in nature.

Secondly, in order for prior art to be eligible for assessing inventive step it is no longer necessary to establish that it must be “information that a skilled person […] could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant”. This removes another evidentiary obligation from an opponent and broadens the prior art base substantially.

2. US utility requirement

An express utility requirement was inserted to align with the US position such that “a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification”. This is in addition to the pre-existing requirement for the invention itself to be useful.

3. UK/European enablement and support requirements

The disclosure requirement for complete applications has been amended to conform substantially to the corresponding UK provision, such that the complete specification must “disclose the invention in a manner which is clear enough and complete enough for an invention to be performed by a person skilled in the relevant art”.

Further, the ‘old test’ for fair basis has been replaced with a requirement based on UK/European law that that the claims are “supported by” the description. The ‘old test’ for fair basis is whether there is a real and reasonably clear disclosure in the body of the specification or priority document of what is then claimed. It is essentially limited to a textual comparison between the claims and the body of the specification or priority document that does not involve any European style inquiry into ‘technical contribution to the art’.

4. Tighter restrictions on amendments

While not a ground for invalidity, under the ‘new law’ patent applicants are not allowed to add matter that goes beyond the disclosure contained in the specification at its filing date, except to correct a clerical error or obvious mistake.

Whereas previously the relevant test as to whether amendments were allowable was connected to claim scope, as a result of the Raising the Bar reforms the test for allowability is whether or not the amendment changes the description contained in the specification as filed.

Looking ahead

Australia has a second tier patent system known as innovation patents.

Innovation patents have an eight year term and up to five claims are permitted. Innovation patents are subject to a different ‘post-grant’ opposition procedure that is stayed by the commencement of court proceedings. As a result, divisional innovation patents are sometimes used as a litigation tool in order to, among other things, short circuit the enforcement delay associated with the pre‑grant opposition procedure for standard patents.

However, the Productivity Commission has recently recommended that the innovation patent system be abolished. If innovation patents are abolished and the innovation patent litigation option is no longer available, pre‑grant opposition proceedings will likely play a more significant role in the strategies of patentees and challengers.

The Federal Government is expected to respond to the Productivity Commission’s recommendation by the end of 2017.

In any event, Australia’s patent opposition procedure provides a useful and typically lower-cost alternative to revocation proceedings for challenging validity that will be heard and determined by a technically qualified Hearing Officer trained in patent law.