As you will be aware, Australia’s Intellectual Property laws are undergoing some changes that will have far-reaching effects, and not just to actions initiated on or after 16 April 2013. The changes to Australia’s Intellectual Property legislation are intended to improve the quality of granted patents; to reduce delays in the resolution of Patent and Trade Mark Applications; and to simplify the IP system.
Registration of the “Raising the Bar” Regulations (2013) on 18 March 2013 means that the foreshadowed amendments to the Patent Regulations (1991) will now go ahead. The following article discusses some of the imminent and more onerous changes to the Patents legislation.
The process of Australian Patent Oppositions is being overhauled supposedly for the purpose of reducing delays in the resolution of Patent Applications. Currently, the same basic process applies to oppositions to the grant of a Patent, as well as to oppositions to other types of request, such as amendments and extensions of time or term.
Under the current legislation, the opposition process is initiated by lodgement of a Notice of Opposition at the Patent Office, followed three months later by a Statement of Grounds and Particulars that sets out the Opponent’s case. The Opponent then has three (3) months in which to serve its Evidence-in-Support. Subsequent rounds of evidence (Evidence-in-Answer and Evidence-in-Reply) are then due three (3) months from the filing of the previous evidence, respectively. The final stage of the process is a Hearing before the Patent Office. During this process, it is usual for each party to seek, and be granted, a number of extensions of time in which to serve their evidence.
With the new Regulations, the effect is to reduce the overall time frame for an opposition to be concluded by making it much more difficult to obtain extensions of time for filing evidence. The new Regulations also require that the Opponent files any cited documents upon which it intends to rely at the same time as filing its Statement of Grounds and Particulars. All documents and evidence is now to be filed solely at the Patent Office, rather than first served on the other party and subsequently filed at the Patent Office.
There will now be a distinction made between substantive and procedural oppositions.
Substantive Oppositions relate to the grant of a Patent and to applications for extension of term. For these oppositions, the process outlined above, with its three-month deadlines, remains effectively the same, except that the Opponent is now given only two (2) months in which to file its Evidence-in-Reply.
Procedural oppositions relate to oppositions to requests for extensions of time, applications for amendment of a document, and the granting of licences. While the overall scheme of a procedural opposition matches that for the substantive opposition, the time frames have been altered considerably.
The Opponent will have only two (2) months from the date of advertisement of the action being opposed, in which to file a Notice of Opposition. The Statement of Grounds and Particulars (together with copies of any cited documents) must be filed one (1) month later. Furthermore, there is no longer a pre-determined, three-month deadline for filing evidence; the amount of time allowed for each subsequent stage of the opposition will be determined by the Commissioner on a case‑by‑case basis. This uncertainty will generate inconsistencies in the application of time limits and will require careful monitoring by practitioners.
Opposition procedures are not the only ones to receive an overhaul in terms of time limits.
Direction to Request Examination
Once the Commissioner issues a Direction to Request Examination, the Patent Applicant will have a reduced period of only two (2) months (previously six months) in which to request examination. Furthermore, modified examination will no longer be available, so all examination will need to be through the standard, normal examination process.
In order to quicken the passage of an Application through the examination process, the period for overcoming all the Examiner’s objections will be reduced to twelve (12) months. The previous extension period of nine (9) additional months will no longer be available. In addition, the standard for patentability will be raised to the “balance of probabilities”, the prior art base for inventive/innovative step will be expanded, whereby the skilled person will be the skilled person anywhere instead of only in Australia, and the Examiner will be more readily able to combine documents in an inventive/innovative step objection.
The above changes apply to actions initiated on or after 16 April 2013, or to Applications for which Examination is requested on or after 16 April 2013.
Finally, the grounds upon which re‑examination can be requested are also being expanded. Granted Patents and Patent Applications, can be re‑examined. The grounds of the re‑examination have been expanded from simply being lack of novelty and inventive/innovative step based on a piece of published prior art, to now include sufficiency of disclosure, best method, sufficiency of support, clarity, utility and manner of manufacture. Furthermore, these grounds are now to be considered under the “balance of probabilities” standard. While these grounds align with those considered by the Examiner during examination, or during an Opposition, what is of some concern is that these expanded grounds and “balance of probabilities” apply to all re‑examinations requested on or after 16 April 2013, regardless of when the Patent Application or Patent was filed or granted. Accordingly, a Patent that has been examined and granted under the current system can be re‑examined under a different, tougher set of criteria.