In a first consideration of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) the Australian Patent Office has held that it must refuse to process an amendment where there is a relevant appeal, thereby exposing the patent applicant’s request for allowance of the amendment to the discretion of the Federal Court.
Under the Patents Act, 1990, it has always been possible to appeal a Patent Office opposition decision to the Federal Court. Under the pre April 15, 2013 law (old law), the Court could only consider the issues on appeal. Given that claim amendments made in response to a decision of the Office would not be considered by the Office until well after the due date for appeal, this meant that claim amendments could not be considered by the Court in the appeal proceeding. Instead they were dealt with by the Office. One consequence was that the appeal decision of the Court could issue on claims that had since been amended by the applicant, potentially requiring another appeal on amendments allowed by the Office. This was an evidently cumbersome procedure.
New court amendment power
The post April 15, 2013 (new law) established by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) has improved the procedure by amending the legislation to permit the Federal Court to process an amendment made in response to the appealed decision of the Patent Office– even an amendment made after the appeal due date.
Limitation of Patent Office power
To prevent parallel processing of an amendment by the Patent Office and the Federal Court, the new law also introduced section 112A into the legislation which effectively limits the power of the Patent Office to consider an amendment made in circumstances where a matter has been relevantly appealed to the Court as follows:
A complete specification relating to a patent application must not be amended, except under section 105, if:
(a) an appeal against a decision or direction of the Commissioner has been made to the Federal Court in relation to the specification; and
(b) the appeal, and any proceedings resulting from it, have not been finally determined, withdrawn or otherwise disposed of.
The recent Patent Office decision Euroceltique S.A.  APO 30 finds that these new amendment provisions apply to any request for amendment not finally determined to be allowed, following the opposition period, before 15 April 2013.
Risk in the new process
These changes are an improvement, but they do pose a new risk for the patent applicant of an opposed application. In particular, by limiting the Patent Office power as mentioned, all amendments made during an appeal will be considered according to a discretionary standard that the Court will apply. In more detail, the Court may, in its discretion allow an amendment that does not fall foul of the ‘new matter’ and ‘claim broadening’ criteria, while the Office must allow such an amendment. The Court’s discretion may be applied against the applicant where the Court considers the applicant knew their claims were invalid and, delayed unreasonably in the amendment of the claims.
The law will apply to any amendment made when a relevant decision or direction of the Patent Office is on appeal before the Federal Court, including an appeal of a substantive or procedural opposition decision.
For those involved in substantive oppositions, there should perhaps be more focus now than required previously as to when to make an amendment, so as to ensure the amendment is considered by the Patent Office, and therefore not subjected to the discretionary considerations of the Court. So for some, this new law may make it preferable to amend during the course of filing evidence in an opposition so that the amendments are incorporated into the patent specification before the opposition hearing and any appeal.
It is clear that there will be occasions where the need to amend follows an unfavourable Patent Office decision. The applicant may then have little choice but to appeal and amend before the Court. This lack of choice becomes more apparent given that the divisional application route is now not possible after 3 months from advertisement of acceptance of the opposed application, effectively having removed divisional application strategy as an alternative to amendment.