The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Act) received Royal Assent on 15 April 2012. Accordingly, most of the provisions will come into effect on 15 April 2013. The Act includes the most significant amendments to Australian patent law since the commencement of the Patents Act 1990 and aims to raise the quality of granted patents by strengthening the key requirements for patentability. These amendments will bring Australian Patent law into closer conformity with international standards. All patent applications filed from 15 April 2013 and patent applications filed prior to that date for which a request for examination has not been filed prior to 15 April 2013, will be examined under the higher patentability standards.
Several key areas have been addressed in the Act, including inventive step, support, enablement and utility.
The Act removes restrictions on the prior art which can be taken into account when assessing inventive step. This will raise the standard for inventive step in Australia to a level that is more consistent with our major trading partners.
Under the current regime, prior art is considered relevant for assessing inventive step only if it would be ‘ascertained, understood and regarded as relevant’ by a person skilled in the relevant art. This requirement has been removed, although the explanatory memorandum accompanying the bill stated that a normal assessment of inventive step would include consideration as to whether the reference would be understood and regarded as relevant by a person skilled in the art. Thus, it appears that under the new Act it will no longer be necessary that the document would be ‘ascertained’, i.e located, which in the past has been a point of contention, such as with obscure or unrelated journal publications. This will significantly increase the prior art base. In addition, the Act will expand ‘common general knowledge’ beyond what is known in Australia to include what is known by those working in the field throughout the world.
The changes will also raise the current Australian standard for disclosure, that the claims be ‘fairly based’ on the description. The Act introduces a European-style requirement that the claims must be ‘supported by mater disclosed’ within the specification. This change seeks to prevent claims which are broader than the extent of the description and drawings contained in the specification. Amendments which extend the subject matter beyond that disclosed at the time of filing will not be allowable under the new Act, whereas currently amendments to include additional data are possible, provided that the new material is not claimed.
The Act will raise the enablement requirement to an international standard. Presently, it is adequate for a specification to enable a skilled addressee to produce something within the scope of the claims. As of 15 April 2013, a skilled addressee should be able to make the invention across the full scope of each claim.
Further revisions introduce the concept of utility into Australian patent law. It is currently required under the Australian Patents Act that an invention be ‘useful’. An invention will fail to be useful if it does not deliver on the promise of the invention as described in the specification. The new utility requirement is largely based on the utility guidelines adopted in the United States. Under the new provisions, there must be a ‘specific, substantial and credible use’ for the invention, and for the invention to actually work as promised in the specification. It should be noted that there is still no requirement that the patentee demonstrate commercial viability of the invention.
The higher patentability standards will apply to all applications filed from 15 April 2013, and for patent applications filed prior to the date for which an examination request has not been filed prior to 15 April 2013.
In light of this, you might want to consider taking the following practical steps before the new Act comes into force:
- Filing Australian convention applications early or entering the national phase of PCT applications early in Australia and requesting examination at the time of filing (and prior to the commencement date of 15 April 2013).
- Voluntarily requesting examination of pending Australian patent applications before the commencement date.
- If you intend to file a divisional application, for example in response to a lack of unity objection, filing the divisional application with an examination request prior to the commencement date.
- For local applicants, filing a complete application as a means of setting a priority date, instead of filing an Australian provisional application, and filing an examination request prior to the commencement date.
- Amending pending applications to include additional data prior to the commencement date, because after commencement it will not be possible to add matter to a patent application.
If you wish to pursue new or current patent applications under the present, more lenient patentability requirements, it will be necessary to request examination no later than Friday 12 April 2013. As we are expecting large numbers of examination requests to be brought forward, we recommend providing instructions well ahead of this deadline.
If you have any specific enquiries about the changes to the patent law in Australia, please contact Debra Tulloch or Paul Jones.
This article was written by Ellen Reid.