This is the first of several articles reporting details of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 as it relates to Australian Patent Law. In this article we will take a look at Patent Prosecution under the amended law.
With the passing of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 in early 2012, we see the most extensive change to Australian Patent Law since the passing of the Patents Act 1990. This act received Royal Assent on 15 April 2012, however most of the provisions of this act will not take effect until 15 April 2013, giving ample time to take advantage of the old law if it is desirable to do so.
To assist us in interpreting the new provisions of the Patents Act, we also refer to an Explanatory Memorandum issued by Parliament to explain the intent behind the new laws.
Note that all of the amendments discussed below will come into effect on 15 April 2013. Any application that has already had its Request for Examination filed before 15 April 2013 will be examined and enforced under the pre-existing provisions. Only applications on which a Request for Examination has not been filed before 15 April 2013 will be examined under the new provisions.
Therefore, if it will be advantageous for an applicant to have their application(s) examined under the old law, a Request for Examination should be filed on the application(s) in question before 15 April 2013. If an application has not yet been filed in Australia the application should be filed and a Request for Examination filed before 15 April 2013.
Previously, the Australian Patents Act required that an invention be useful to the extent that it meets the promise of the invention as described in the specification. With the new amendments to the Act, this requirement remains but in addition a new requirement is introduced that a specification should disclose a "specific, substantial and credible use" for the invention and must be disclosed in a way that can be appreciated by a person skilled in the relevant art.
This requirement is based largely on utility guidelines developed by the United States Patent & Trademark Office (USPTO).
Applications that have been drafted for international filing should not be affected by this change, however if there is a concern that an application does not contain an adequate description of a specific, substantial and credible use, there will be an advantage in prosecuting the application under the old law.
A new Sufficiency Requirement has been introduced for both Provisional and Complete Specifications, whereby a 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". According to the explanatory memorandum this requires that the subject matter of a claim should be enabled across its "whole width".
This requirement also extends to priority documents on which convention priority claims may depend.
It is clear from the explanatory memorandum that this provision is based on the similar United Kingdom law and is intended to be given a similar interpretation to that established in the United Kingdom.
The requirement to disclose the best method of performance of the invention has been retained for complete specifications, however as is currently the case, a provisional application need not disclose the best method of performance of the invention.
If the claims that the applicant wishes to be granted are not fully enabled by the disclosed embodiments, prosecution under the old law is recommended.
Currently a patent claim must be fairly based on matter disclosed in the specification.
This requirement is replaced with a support requirement. The explanatory memorandum indicates that the support requirement is intended to encompass two requirements:
- there must be basis in the description for each claim; and
- the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art. Excessively speculative claims will presumably be objectionable based on this requirement.
Validity of Priority Claims will also be dependant upon the Priority Document meeting the new support requirement. To maintain its priority date, based on an earlier application (Australian Provisional Application or a Foreign Basic Application) the subject matter of the claim must be supported by the earlier application.
If the claims that the applicant wishes to be granted are broader than might be reasonably supported by the disclosed embodiments, prosecution under the old law is recommended.
Previously in Australia, Inventive step was tested against the Common General knowledge existing in Australia in the field of the invention. Prior art could be read with the common General Knowledge provided that the prior art was information that a skilled person ….. could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant…. .
The changes introduced into the Patents Act remove the territorial limitation for Common General Knowledge, meaning that from 15 April 2013 for the first time, Common General Knowledge outside Australia will be relevant to Inventive Step considerations for Australian Patents and Patent Applications. This also means that it will become easier to use foreign experts to present testimony regarding Inventive Step in Australian Patent Cases.
The definition of the Prior Art Base will also change by removal of the words “could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant”, allowing a much broader range of art to be considered in Inventive Step objections.
When read in isolation this later change would seem to open the door to the consideration of art from outside the technical field of the invention, however the explanatory memorandum accompanying the Act explains that the requirements that prior art be `understood' and `regarded as relevant' are implicit in the pre-existing tests for inventive step and are therefore not required as a threshold limitation for qualifying prior art.
The removal of the requirement that the prior art “be reasonably expected to have ascertained” indicates a desire to change the law as expounded in Commissioner of Patents v Emperor Sports Pty Ltd 2006 [FCAFC 26] (10 March 2006). In that case it was held that a rugby league or Australian rules coach could not be reasonably expected to ascertain a published US patent specification describing removable tags for playing American football, thus nullifying an inventive step objection, based on the US Patent document, which was raised against an Australian Patent Application for a similar game.
However, the explanatory memorandum does include a warning against the impermissible use of hindsight.
We expect that the Inventive step changes will result in narrower claims being granted in Australia in the future. If a pending application is threatened by prior art from fields that are not directly aligned with the invention, or if the Common General Knowledge is more developed in a jurisdiction outside Australia, and the applicant wishes to maintain broader claims, we again recommend that prosecution be pursued under the old law.
In cases where other search reports (e.g. a PCT Written Opinion or another Foreign Search/Examination Report) have not issued, there will be a new system whereby a Preliminary Search and Opinion can be provided by the Patent Office. This search will be conducted prior to Publication of the Application (OPI) to allow the Preliminary Search and Opinion to be published with the application. This will provide applicants who only file in Australia similar information to that available prior to publication of a PCT Application. It will also provide the public at large with a better indication of whether a patent will be granted on an application.
Where patent examiners have not previously been entitled to consider and report on usefulness and prior use in their examination of an Australian Patent Application, they will be permitted to do so in the future. Examiners will be entitled to consider whether the specification discloses a credible use as well as whether the promise of the invention has been met by the claimed subject matter.
Historically, the patent legislation required the Commissioner to accept a lower standard of proof than a court. The Commissioner was required to accept a patent application ‘unless it appears practically certain or clear’ that it would be invalid. In future all grounds examined will be examined on the basis of the "balance of probabilities" standard. This standard will also apply to re-examination and opposition (although only for patents and applications governed by the amended Act). It can be expected that likelihood of success in oppositions and re-examinations will be increased significantly once “New Act” applications start emerging, particularly where inventive step is an issue. It is therefore also anticipated that we may see an increase in the use of the re-examination and opposition systems in the future.
While it has always been forbidden to claim added subject matter in Australian Patent Applications, it was possible to add description after filing, such as where there may have been a clarity issue. In future this will not be permitted except in the case where the amendment is for the purpose of correcting an obvious mistake or clerical error. Amongst other things this change will prevent support and sufficiency problems being corrected after filing and will align our practice with that of other major jurisdictions.
In addition to the complete specification as filed, "other prescribed documents (if any)" will be considered in deciding if subject matter has been added. We will have to wait for the publication of the Regulations to discover what other documents might be prescribed.
The changes to the scope of allowable amendments will prevent the types of amendment that might have fixed specifications that have Utility, Sufficiency or Support issues. If any of these issues are likely to arise then early prosecution under the old provisions is recommended.
Response of the Courts
Ultimately the way in which these new provisions are interpreted will depend on the reaction of the Australian Courts. It will take some years for Patents/Applications governed by the new provisions to progress to the point where they might come before a court and thus there will be a degree of uncertainty in some areas for some time to come.