Federal Court Determines That “Double Patenting” Is Not a Basis for Revocation

Innovation Patent Bar Raised Too


The Raising the Bar Act will introduce significant changes to Australia’s Patents Act on 15 April 2013.  While the impact of the Raising the Bar Act on standard patents has been discussed in a number of blogs and elsewhere, the impact of the Raising the Bar Act on innovation patents has received less attention.

Significantly, granted innovation patents for which examination is not requested prior to 15 April 2013 will be affected by the Raising the Bar Act.  For an innovation patent to be considered under the current, more lenient provisions, examination must be requested for the patent before 15 April 2013.

To provide some background, after an innovation patent application is filed it undergoes a formalities check.  If all formalities are in order the innovation patent is granted.  If the patentee wishes to sue a third party for alleged patent infringement, the innovation patent must be certified after successfully passing through substantive examination.  Innovation patents are not automatically examined.

As discussed above, the Raising the Bar Act will introduce a number of changes for innovation patents.  The changes outlined below will affect all new innovation patent applications, or any granted innovation patents for which examination has not been requested prior to 15 April 2013.  These changes include:

Changes to existing examination/revocation grounds:

  • When assessing innovative step, common general knowledge from anywhere in the world may be considered;
  • Sufficiency – invention must be disclosed in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
  • Support – claims must be supported by the matter disclosed in the specification.

New grounds of examination:

  • the patent must be useful (a specific, substantial and credible use);
  • the patent mustnot claim as an invention a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients;
  • the patent must not claim as an invention a process producing such a substance by mere admixture;
  • the patent must not contain a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim; and
  • the patent must not claim an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, where the relevant claim or claims in respect of each patent have the same priority date or dates.

Other matters:

  • Changes to amendment requirements – as a result of the amendment, the specification must not claim or disclose matter that extends beyond the disclosure of the specification as filed, or other prescribed documents; and
  • In opposition proceedings, hearings by IP Australia will be on the basis of a “balance of probabilities”.
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