14 February, 2013

Two Months until the Bar is Raised on Australian patents - Time for Action!

Two Months until the Bar is Raised on Australian patents - Time for Action!

Significant changes to Australian patent law come into effect in two months' time, on 15 April 2013, with the key provisions of the Intellectual Property Laws Amendments (Raising the Bar) Act 2012 taking effect on that date.

The new laws will apply to all Australian patent applications where a request for examination has not been filed prior to 15 April 2013. This includes all new applications filed on or after that date and all PCT national phase entries made on or after that date. The current laws will continue to apply to any application where a request for examination is filed prior to 15 April 2013 and to any patent granted on such an application.

The primary purpose of many of the changes is to "raise the bar" of patentability, or to reduce timeframes made available for applicants during the prosecution process. There will also be some uncertainty in relation to interpretation of the new provisions until they are considered by the Federal Court of Australia. Accordingly, we strongly recommend taking action before 15 April 2013 to ensure that the current laws apply.

In particular we recommend, prior to 15 April 2013:

1. Requesting examination of all pending Australian patent applications where examination has not already been requested;

2. Entering the Australian national phase of any pending PCT applications and requesting examination at the time of national phase entry;

3. Filing an Australian application claiming Convention priority where a first priority application has been filed within the last twelve months (if a PCT application has not already been filed) and requesting examination at the time of filing; and

4. Filing one or more divisional applications further to any currently pending Australian patent application (or PCT application) where a unity objection has been raised, or where the applicant otherwise intends to file one or more divisional applications, and requesting examination at the time of filing the divisional application(s).

In anticipation of receiving a large number of instructions leading up to 15 April, your instructions, or any queries, relating to the above would be appreciated at the earliest opportunity.

Some of the key provisions of the Raising the Bar Act that will apply to all Australian patent applications where a request for examination is not filed before 15 April 2013 include:

a) Abolition of current limitations on prior art that may be relied on in any inventive step assessment, which is currently limited to prior art that "could have been reasonably expected to have been ascertained, understood and regarded as relevant" by a person skilled in the art, thereby greatly expanding the scope of prior art that may be relied on in any inventive step assessment;

b) An increased sufficiency of description/enablement requirement, intended to require sufficiency of disclosure across the full scope of any claim;

c) A new support requirement to replace the current "fair basis" test;

d) A new utility test requiring disclosure of a "specific, substantial and credible" use for the claimed invention;

e) A new prohibition on amendments that add new subject matter to a specification;

f) A higher "balance of probabilities" standard for proceedings before the Australian Patent Office, replacing the present "benefit of the doubt" standard that applies to most patentability criteria;

g) A reduced two month period to request examination after a Direction to Request Examination issues from the Australian Patent Office (as opposed to the present six month period);

h) A reduced 12 month period from the first Examination Report to secure acceptance/allowance of an application (as opposed to the present 21 month period); and

i) Abolition of the option of requesting modified examination.

For more information, please contact: Greg Gurr

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