Published by Cloe Loo on 22nd May 2012
The Intellectual Property Laws Amendment (Raising the Bar) Act has passed into law in Australia, with most provisions coming into effect on 15 April 2013. This brings major changes to the patent law in Australia, with the aim of better aligning patent practice in Australia with other jurisdictions. Below are some of the important changes that may affect your pending or future Australian patent application.
Until recently, when assessing the patentability of a patent application in Australia, inventive step is judged against common general knowledge within the ‘patent area’, i.e. Australia. Changes to the legislation means that the territorial limitation will be removed when the legislation comes into effect and common general knowledge outside Australia will also be considered.
The amended legislation also delimits relevant prior art documents from those which would have been ‘ascertained, understood and regarded as relevant’ by the skilled person, to all information that was publicly available before the priority date.
This will bring the inventive step requirement in Australia more in line with the standards in other countries/regions, such as US, UK and Europe.
Unlike in the UK, an invention does not need to be industrially applicable to be patentable in Australia. Under the current Australian patent law, an invention is patentable if it is useful. The usefulness test is now strengthened by the amended legislation, where an applicant will be required to disclose a ‘specific, substantial and credible’ use for his or her invention. This change aims to prevent patenting of an invention that is ‘speculative’, where further tests or experimentation are required in order to reduce the invention into practice.
Support and Sufficiency
Under the amended legislation, claims in a patent specification will need to be fully supported by the description, and can no long just have ‘fair basis’, as required under current patent law. Furthermore, the invention will need to be disclosed in a clear and complete manner in the specification so as to allow a skilled person to perform the invention. These changes align the Australia law with existing UK/European provisions.
Preliminary Search and Opinion (PSO)
A PSO, similar to an International Search Report and Written Opinion for an International Patent (PCT) Application, will be made available, upon request, on a complete patent application where such information is unlikely to be made available from another office.
Under the current patent law, an Australian patent application having a corresponding patent of the same scope granted in English in any one of the USA, Canada, New Zealand and Europe (EPC) can request modified examination to expedite the application process. Search is dispensed with and the Examiner cannot raise objections on grounds of clarity, unity or sufficiency. If a foreign patent is yet to be granted examination can be deferred by up to nine months.
However, under the amended legislation, modified and deferral of examination will no longer be available.
It will no longer be possible to add new matter into the patent specification that extends beyond what was originally filed under the amended legislation. However, corrections of clerical errors or obvious mistakes will be allowed.
Under the amended legislation, the Commissioner will have discretion to allow or refuse requests to postpone acceptance. This means that acceptance of an application may take place immediately after examination, thereby preventing amendments of claims prior to acceptance. Alternatively, for example, acceptance may be postponed if entitlement of the patent is in dispute.
Filing of a divisional application or conversion of an application into a divisional application will be restricted to three months of acceptance of the patent application under the amended legislation. This serves to prevent late filing or late conversion of the divisional application in opposition proceedings, which is also required to be filed within three months of acceptance (unless an extension is requested within the first three months).
The changes above will apply to new and divisional applications filed on or after 15 April 2013, and existing applications where substantive examination is requested on or after the same date.
If you or your clients have patent applications pending, or are considering patent protection, in Australia, we recommend requesting examination for new or existing patent applications before 13 April 2013 to take advantage of the current, more lenient requirements.
If you have any questions about the effect of the changes on your Australian patent application, please do contact us.
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