By Craig Humphris & David McCarthy
--
Australia is attempting to raise its patentability
threshold and specification
requirements. Significant amendments have been made to Australia's
patent laws through enactment of the Intellectual Property Laws Amendment (Raising
the Bar) Act 2012. Most provisions will take effect from 15 April 2013.
The Raising the Bar Act, which was enacted on 15 April 2012, seeks to raise the quality of granted patents to a level that is more
consistent with the standards set with Australia's major trading partners,
including the U.S., Japan, and Europe. Prior to this Act, concerns were expressed
in the 2008 review of the national innovation system (entitled 'Venturous Australia') and the
Government's response to this review (Powering
Ideas: the innovation agenda for the 21st century, 12 May 2009),
that the thresholds set for the grant of a patent in Australia are too low,
patents are granted for inventions that are not sufficiently inventive, and
that the details of inventions are not sufficiently disclosed to the public.
The Raising
the Bar Act intends to raise the requirements for patentability and the
requirements for patent specifications for all applications filed after 15
April 2013, and for patent applications filed prior to that date for which an
examination request has not been filed prior to 15 April 2013.
A number of actions are available to patent applicants
to ensure that the current and perhaps more lenient patentability and
specification requirements apply to their applications and future patent
grants.
• File
patent applications, including national phase applications, and request examination before 15
April 2013.
• If a PCT
application has not been filed, consider filing a Convention application in Australia and request examination before 15
April 2013.
• Instead of filing a
provisional application to obtain a priority date, file a complete application and request examination before 15 April 2013.
• Add all
new subject matter to description/examples before 15 April 2013.
• File divisional
applications and a request for examination before 15 April 2013.
• File divisional
applications from opposed applications before 15 April 2013.
• If desired, convert
pending applications to a divisional application before 15 April 2013
Future granted patents will still be litigated
under the current patentability and specification requirements if the
application was filed and had examination requested before 15 April 2013.
FURTHER INFORMATION
The key amendments made by the Raising the Bar Act are as follows:
Schedule 1 – Raising the quality of granted patents
Inventive Step
Currently, only common general knowledge from
Australia is taken into account in determining what is common general knowledge
for the purposes of assessing inventive step. Under the Raising the Bar Act, common general knowledge from overseas (that
is, without a territorial limitation) can also be taken into account and this
will permit the use of foreign experts who have given evidence in overseas
proceedings.
Previously, only information 'ascertained,
understood and regarded as relevant' was considered in a review of prior art
for the assessment of inventive step. Under the Raising the Bar Act, all information in existence in Australia or
overseas can be considered prior art, provided it is capable of being understood
and regarded as relevant. This should increase the volume of prior art taken
into account when assessing inventive step.
Sufficiency
The level of disclosure required for provisional
applications will be increased and will require a similar level of disclosure
required for complete specifications, although provisional applications need
not disclose the best method of performance of the invention.
Complete applications will have their disclosure
requirements changed. The law will be amended to conform substantially to the
corresponding United Kingdom provision and the new provision states that the
complete specification must "disclose the invention in a manner which is
clear enough and complete enough for an invention to be performed by a person
skilled in the relevant art". The explanatory memorandum to the Raising the Bar Act, indicates that the
subject matter of a claim should be enabled across its "whole width".
Fair Basis
Australia's requirement that a claim needs to be 'fairly
based' on matter disclosed in the specification will be replaced with a 'supported
by' requirement.
Under the new law, there must be basis in the
description for each claim. Further, the scope of the claims must not be
broader than is justified by the extent of the description, drawings, and
contribution to the art. This second aspect of the support requirement appears
to be intended to provide a means for rejecting unduly speculative claims.
Currently, it appears settled by the Australian
High Court (the supreme court in Australia's court hierarchy) following its
decision in Lockwood
Security Products Pty Ltd v Doric Products Pty Ltd (2004)
217 CLR 274, that there
is no link between claim scope and technical contribution in the art. The Raising the Bar Act attempts to change
this and seeks to import a link between these two elements.
Utility
The Raising
the Bar Act introduces a new provision which will require a complete
specification to disclose a "specific, substantial and credible use"
for the invention. This provision was based substantially on the corresponding
US section. This requirement for a specification to disclose a use for the
invention is additional to the requirement for the invention itself to be
useful, in the sense of meeting the promise of the invention as described in
the specification.
Examination
Under the new system, patent examiners will be able to consider utility and prior use at the
examination stage. These grounds are not available to examiners under the
current system.
The standard of proof to be applied by an
examiner for all examination tests will be raised to the civil standard
(balance of probabilities). Currently, an Examiner is required to accept a
patent application 'unless it appears practically certain' or 'clear' that the
patent would be invalid. Under the new laws, the Examiner will need to be satisfied on the balance of probabilities that a patent
would be valid. These changes
will shift more burden on the applicant to show patentability.
Re-Examination
Australia's ex parte re-examination procedure
before the patent office (IP Australia) will be modified. Currently, re-examination only considers the
grounds of novelty and inventive step. However, from 15 April 2013,
re-examination will be extended to include the grounds of best method, clarity,
fair basis, manner of manufacture, and utility.
Amendments
The
amendment provisions will be modified to prevent applicants from adding subject
matter to their applications, except when the amendment is to correct an
obvious mistake or clerical error. Whether subject matter has been added is
made with reference to the complete specification as filed, as well as "other
prescribed documents (if any)".
Schedule 2 – Free access to patented inventions for
regulatory approvals and research
Regulatory Exemption
Under the current system, exemption from patent
infringement is allowed for use of a patented invention solely connected with
generating information for submission to a drug regulation authority for
seeking regulatory approval of a pharmaceutical.
From 15 April 2013, exemptions from patent
infringement will be broadened beyond pharmaceutical products and will be
provided for use solely connected with generating information
for seeking regulatory approval for any product. These changes will be most
relevant to certain medical device products and agricultural products that
require regulatory approval
before market launch.
Experimental use
exemption
Australia has now codified an experimental use
exemption to patent infringement.
The provision was made effective on 15 April 2012
and applies to acts done for experimental purposes
relating to the subject matter of the invention, including:
• Determining the properties of an invention;
• Determining the scope of a claim relating to the invention;
• Improving or modifying the invention;
• Determining the validity of a patent or of a claim relating to the
invention; or
• Determining whether the patent would be/has been infringed by the doing
of an act.
Schedule 3 – Reducing delays in resolution of
patent applications
Divisional Applications
Other significant amendments introduced by the Raising the Bar Act, include changes to
practice on divisional applications (Australian divisional applications are
often seen as equivalent to U.S. continuation applications).
(1)
Under the current system, it is possible to file divisional applications
from applications under opposition (Australia has a post acceptance, pre-grant,
third party opposition procedure). The practice of filing divisionals from
applications under opposition is a useful tactic by patent applicants who want
to maintain a live application in case the parent application is successfully
opposed or substantially narrowed. From 15 April 2013, it will no longer be possible to file divisional applications from applications
under opposition or at the end of the opposition period (3 months from
advertisement of acceptance).
Furthermore, under the current system, it is possible to withdraw an
opposed application at any time and pursue a divisional application. The
applicant can also wait to see the evidence from the opponent before making a
decision to pursue this option and withdraw. However, under the new system,
patent applicants will require the Commissioner's consent to withdraw an
opposed application and consent is likely to be withheld if all other
divisional applications are removed.
(2) From 15 April 2013, it will also no longer be
possible to convert an application to a divisional or
innovation patent off an earlier filed application, e.g., to overcome novelty or
inventive step rejections from own application.
Under the current system, where a novelty objection is raised against an
applicant's invention citing their own earlier application, the applicant could
overcome the objection by converting the later application to make it a
divisional of the earlier application. The Raising
the Bar Act will close this option.
Mr.
Humphris is a Senior Associate with Wrays and team leader of Wrays' Adelaide
office. Dr. McCarthy is an Associate
with Wrays.