Amendments to Australia’s patent laws are coming to the fore as the Patent Office starts examining patent applications under the new regime.

The Amendments

Watermark has previously widely reported on the ‘Raising the Bar’ amendment Act and Regulations. Some of the changes relevant to standard patent examination are reductions in:

  • the period of time permitted for examination
  • the scope to argue against inventive step objections
  • the scope to amend the specification
  • the ability to include omnibus claims.

Identifying ‘Raised Bar’ Examination Reports

Examination reports to which the amendments apply can be identified from the following information, listed on the first page of each standard patent examination report:

  • the Examination Request Date. The new laws apply to applications in respect of which examination was requested on or after 15 April 2013.
  • the timeframe within which the applicant must overcome all objections. A 12 month timeframe to overcome all objections indicates a post-Raising the Bar case. A 21 month timeframe to overcome all objections (and a 12 month timeframe before which monthly fees become payable with any response) indicates a pre-Raising the Bar case.

Timing

In a small number of exceptional cases, raised bar examination reports have issued early. These exceptional cases include:

  • innovation patents in respect of which the applicant has requested examination
  • standard patent applications in respect of which the applicant has requested expedited examination
  • divisional patent applications.

The vast majority of post-Raising the Bar cases have remained in the examination queue until now.

The Patent Office website indicates that most examiners are examining cases in respect of which examination was requested in February or March 2013 (that is, pre-Raising the Bar cases).

However, we understand that experienced examiners from the Applied Chemistry (‘B2’) workgroup recently received training on examining post-Raising the Bar cases, and those examiners are now directing their focus to those cases.