15 March, 2011

Transitional Provisions in the proposed IP Laws Amendment Bill

Transitional Provisions in the proposed IP Laws Amendment Bill

In a recent article we alerted you to the proposed Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 and accompanying explanatory memorandum. As summarized in our article the proposals include wide-ranging and significant reform of Australian patent laws. The proposed Bill has been released for public comment and is available on IP Australia’s website (www.ipaustralia.gov.au). The deadline for submission of comments to IP Australia is 4 April 2011.

We are writing now to alert you to the proposed transitional provisions which will govern the manner in which the new laws are applied. The transitional provisions of most concern are those set out in Schedule 1 item 39(1) and Schedule 6 item 132(7). As currently proposed, the new provisions increase the requirements for an application to meet the sufficiency, support, utility and inventive step standards, yet will apply to all applications for which an examination report has not issued prior to commencement of the new legislation. This means that applications filed prior to commencement of the new legislation, and even those upon which an examination request has been filed, will be subject to the new provisions unless an examination report has issued by commencement. Since the date upon which an examination report issues is not in the applicant’s control, the publication of this draft legislation now must cause considerable concern to many applicants who have already filed their applications.

In our opinion the new provisions should only apply to applications filed on or after the date of commencement of the legislation as that provides an applicant with confidence that their application will be judged against a known set of standards rather than against a new set of standards which, by definition, raise the bar of patentability. In the past, amendments to patentability requirements have only applied to applications filed following commencement of the provisions implementing those requirements.

After an application is filed it may not be possible to amend it to include additional disclosure which may be necessary to meet the new requirements. These applicants have pursued patent protection in good faith relying on the current patent laws and have fulfilled their share of the bargain by committing their inventions to publication. Assessment of their application against a raised standard amounts to changing the rules after the game has started.

In view of the nature of the transitional provisions we encourage patent applicants to familiarise themselves with the proposals and to make submissions to IP Australia as you see fit.

Submissions should be sent by email to mdb-reform@ipaustralia.gov.au before 4 April 2011.

For our initial news alert on the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 please click HERE.

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