The Bar has Risen


Australian patent practitioners have been aware of the changes since the Intellectual Property Laws Amendment (Raising the Bar) Act 2011 came into force on 15 April 2012, however most of the changes only come into effect today.

Raised Standards

The changes to the standard required for patentability will apply to any patent application for which examination is requested from today onwards, even if the application was filed before today.

  • Inventive step – for the purposes of inventive step, common general knowledge from anywhere in the world will now be considered.
  • Inventive step – previously only prior art information ‘ascertained, understood and regarded as relevant’ by the skilled person could be considered for the purposes of inventive step. This restriction has now been removed, meaning all prior art information is now to be considered.
  • Utility – patent specifications will now need to disclose a specific, substantial and credible use for the invention.
  • Sufficiency – patent specifications will now need to describe the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the relevant art. (This requirement will most likely demand enablement across the breadth of each claim.)
  • Fair basis – the requirement that claims be ‘fairly based’ has been replaced with the new requirement that claims be fully supported by the description.
  • Provisional specifications – the standard of disclosure in provisional specifications has been raised to meet the same enablement standard of a complete (non-provisional) patent application.


From today:

  • The standard of proof applied by the Commissioner of Patents during examination will be raised to the ‘balance of probabilities’.
  • Examiners will report on utility.
  • It will no longer be possible to add subject matter to a patent specification even if it is not claimed.
  • Modified examination is no longer available.
  • When no previous search and/or examination report has issued from another patent office, the Commissioner of Patents may conduct a search and opinion on a standard patent application (similar to an international search and opinion).

Divisional Patent Applications

From today:

  • The period for filing a divisional application will be restricted to the period for commencing opposition proceedings against the accepted parent application, that is, 3 months from the date acceptance of the parent application was advertised.
  • It will no longer be possible to convert a patent or patent application to a divisional application unless the conversion is made within 3 months of the advertisement of acceptance of the proposed parent or before the acceptance of the proposed divisional.


From today:

  • Any opposed application will only be able to be withdrawn with the consent of the Commissioner of Patents.

Other Changes

  • Privilege – will be extended to clients of foreign patent and trade mark attorneys and will also cover communications with third parties in circumstances where privilege would have applied if the patent or trade mark attorney were a lawyer.
  • Entitlement – a new provision has been added that ensures that a patent will not be deemed invalid solely because it was granted to the wrong person.
  • ‘Omnibus’ claims (claims defined by reference to the embodiments) – are no longer allowable unless they are absolutely necessary to define the invention.

The above is only a brief summary of the changes and is not intended to replace legal advice. Please do not hesitate to contact us if you have any queries or require further information.

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