The Australian Patents Act 1990 has recently been amended with the passage of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The legislative changes are intended to make it more challenging to obtain patent protection in Australia.
The most significant provisions of the new Act will come into force from 15 April 2013. The provisions will affect pending patent applications for which examination has not been requested by 15 April 2013, and Australian standard applications filed on or after 15 April 2013.
This article outlines some of the key legislative changes relevant to prosecution that will occur under the new Act and briefly considers the impact of these changes for applicants.
Inventive step is currently assessed against (i) documents that a person skilled in the art would reasonably be expected to have “ascertained, understood and regarded as relevant” (rather than all documents in the art); and (ii) the common general knowledge of a person skilled in the art in Australia.
Under the new Act, inventive step will be assessed by considering the common general knowledge of a person skilled in the art anywhere in the world, not just in Australia. In addition, the current “ascertained, understood and regarded as relevant” restriction on prior art will be removed.
Lack of utility or usefulness is not currently a ground for refusal during examination. However, under the new Act, utility will be introduced as an examination ground. Under the new utility test, the specification must disclose a “specific, substantial and credible use for the invention”. This is intended to counter speculative applications and in most areas of technology, should not give rise to any significant changes in practice. However, in the case of genetic technologies, for instance, applications not describing the utility of the claimed subject matter sufficiently may be at risk of being refused. This requirement could possibly be addressed by adding to the description before 12 April 2013 while the amendment provisions (see below) are more lenient.
The standard of descriptive support required will be raised under the new Act, in that the 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”. The current Australian legislation is more lenient compared to other jurisdictions, such as Europe and the United States, in that relatively broad claim scope may currently be claimed in Australia with few examples and description. Under the new Act, it is envisaged that Australian applications will need to provide sufficient enablement across the full width of the claim, or else they will be required to be amended to narrow the claim scope to correspond more closely to the disclosure.
The current, lenient “fair basis” test will be replaced with the requirement that claims are fully supported by the description. The current “fair basis” test has in practice meant that some applications have been allowed in Australia while the foreign counterparts have failed to satisfy the support requirements. Under the new Act, both: (i) basis in the description for each claim; and (ii) claim scope that is not broader than that justified by the description, will be required. Therefore, basis will now be required in the description for each claim, and the scope of the claims may not be broader than that justified by the description, examples, drawings, and contribution to the art.
Under the current law, it is possible to add new examples and to add to the description, so long as the amended description does not claim matter “not in substance disclosed in the specification as filed”. This means that under the current law, it is possible to introduce additional description, such as where an inadequate description has been originally filed, or where experimental data is obtained after filing. Under the new Act, the law will be brought into line with other major jurisdictions in that it will not be allowable to add descriptive support that adds matter extending beyond what was disclosed at the time of filing the application.
Examination response/acceptance deadline
The period for placing an application in order for acceptance will be reduced under the new Act from 21 months from the first examination report to 12 months. The 21 month period will continue to apply for all applications where examination is requested prior to 15 April 2013.
The test for a valid priority date will be made more stringent under the new Act. For a valid priority date, based on either an Australian provisional application or a foreign priority application, the legislation requires that the document(s) relied upon contain a disclosure that is “clear enough and complete enough for the invention to be performed by a person skilled in the art”. In this regard, the new Act aligns the requirement for securing a priority date from an earlier filed application with the requirement for disclosure, i.e. sufficiency, in a complete patent application. This ensures that an applicant cannot secure a priority date on the basis of a disclosure in a provisional or other relevant specification that is less complete than required in a complete specification.
Postponement of Acceptance
From 15 April 2013, the Commissioner will have discretion as to whether to allow any requests for postponement of acceptance. Currently, postponement of acceptance is granted as of right. Under the new Act, requests for deferral may be refused, for instance, where the Commissioner is aware of a particular interest of a third party in early resolution of an application.
Modified examination involves aligning the contents of an Australian specification with the specification of an equivalent foreign patent, such as a UK, US or European patent. Under the new Act, modified examination will no longer be available; therefore, any requests for modified examination must be filed by 12 April 2013.
Period for requesting examination following direction
The period for requesting examination following a direction to request examination (issued by the Commissioner) the will be reduced from 6 months to 2 months under the new Act.
Omnibus claims will generally no longer be allowed in applications where examination is requested on or after 15 April 2013. The circumstances where omnibus claims will be allowed will be restricted to where an omnibus claim is absolutely necessary to concisely and clearly define the invention.
What do these changes mean for applicants?
If examination of an application is requested before the new Act comes into force, then the current, more lenient validity tests and time periods will continue to apply. Applicants should therefore consider taking the following action before 12 April 2013:
- Requesting examination of all pending Australian applications regardless of the actual deadline;
- Filing any necessary Australian divisional applications together with a request for examination;
- Requesting early entry into national phase in Australia out of currently-pending PCT applications together with a request for examination; and
- Bringing forward the filing of any Australian standard applications or convention applications and filing these together with a request for examination.
- In addition, applicants wanting to add examples or description to an application should make such amendments before 12 April 2013.
The new Act generally aims to bring the Australian requirements regarding patent specifications into line with patent systems in other jurisdictions, such as the United Kingdom, the United States or Europe. Furthermore, Australian examiners already have a tendency to follow the prosecution of corresponding applications. The likely result is therefore that allowed Australian claims will be more closely aligned with foreign counterparts with respect to scope, and the outcomes before the Australian Patent Office should be more certain.
However, it is unknown at this stage whether the Australian courts will choose to apply the new grounds in the same way as they have been applied by the courts in other jurisdictions. The new provisions may therefore introduce uncertainty into the validity assessment in Australia by the courts.
Therefore, having applications examined under the current legislation will not only mean that the current, more lenient validity tests will apply during examination, but it may also result in more certainty regarding validity before the courts.