The Intellectual Property Laws Amendment (Raising the Bar) Act 2011 took effect on 16 April 2012, with some provisions taking effect 12 months later. The Act has implemented a range of reforms designed to bring Australian patent laws in line with other key jurisdictions.
New experimental use and regulatory exemptions: effective 16 April 2012
Until now, there has been no statutory protection of experimental use of patented inventions in Australia. A new experimental exemption will allow researchers to conduct experiments related to a patented invention without fear of infringement. The exemption is not, however, intended to exempt use of a patented research tool which is used to facilitate an experiment.
In addition, the exemption which relates to obtaining regulatory approvals will be expanded. The current pharmaceutical regulatory exemption allows competitor manufacturers to exploit a pharmaceutical patent for the sole purpose of obtaining regulatory approval for their pharmaceutical product without the risk of infringement. This exemption is often used in circumstances where a pharmaceutical patent is nearing expiry. The expanded regulatory exemption will extend to all technologies (not just pharmaceuticals) where obtaining regulatory approval is imposed by law in Australia or another jurisdiction.
Other reforms: effective 15 April 2013
● Patentability – prior art base, obviousness, utility and fair basis:
- Prior Art Base and Inventive Step: Limitations on prior art and common general knowledge which may be taken into account in assessing inventive step / obviousness will be removed.
- Utility: The definition of "useful" will be amended to require a patent specification to disclose a "specific, substantial and credible" use for the claimed invention.
- Sufficiency: Provisional and complete specifications must disclose the invention "in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art."
- Fair Basis: After a series of controversial court rulings, the "fair basis" requirement is replaced with a "support" requirement. A claim of a specification will not meet the support requirements unless the description provides adequate directions of how to put the invention into use.
- The standard of proof has been clarified - the standard of proof to be applied by Patent Office Examiners for all purposes is the "balance of probabilities" test.
- A new statutory provision provides that a patent is not invalid because it was granted to the wrong person, an entitlement issue that has undermined a number of Australian patents.
- Additional grounds of re-examination of standard patents. Currently, novelty and inventive step are the only grounds upon which re-examination may take place. These grounds have been expanded to all the substantive grounds considered during examination, so they are consistent with the grounds which may be considered by a court in an invalidity action.
Non-infringement declarations. The statutory reference to a person who wishes to "exploit the invention" will be replaced with a person who "has done, is doing, or is intending to do an act". This means that a person seeking a declaration will not need to have sought or been granted a patent themselves in order to make use of the provision, and clarifies that a declaration can apply to a present, current or future act. An applicant for a non-infringement declaration will also be able to challenge the validity of a patent in the same proceedings.