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Patent reform in Australia – is your business ready?

Australia’s patent law is in a process of significant reform, with the most substantial changes taking effect from 15 April 2013. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 enacts legislative changes that will do just that – raise the bar with respect to patentability and patent specification requirements. The Act is intended to bring Australia more into line with the laws of its major trading partners.

Here is a snapshot of the more important changes relevant to you and your business:

  • expansion of the prior art information as it relates to inventive step to include the consideration of any document for the purpose of assessing obviousness and to remove any geographical limitation for common general knowledge (previously the prior art information was limited to documents that a skilled person would have reasonably been expected to have ascertained, understood and regarded as relevant, and the common general knowledge was confined to that as it existed in Australia);

  • introduction of a requirement for the specification to disclose a specific, substantial and credible use for the (claimed) invention;

  • introduction of a new sufficiency requirement, based on corresponding laws in the UK and Europe, that both the complete and the provisional specifications disclose the invention in a manner which is clear enough and complete enough to be performed by a person skilled in the relevant art;

  • replacement of the existing ‘fair basis’ requirement with a new ‘support’ requirement intended to encompass two concepts, namely, to require basis in the description for each claim and to require that the scope of the claims is not broader than is justified by the extent of the description, drawings and contribution to the art; and

  • raising the standard of proof for examination, reexamination and oppositions – the Commissioner or her delegates must now be satisfied, on the balance of probabilities, that the application meets all patentability criteria.

Put simply, the sum of these changes means it will now be more difficult to obtain patent rights in Australia. In particular, the laws are being amended to place more emphasis on the level of disclosure/exemplification of an invention necessary to achieve the grant of patent claims.

Other changes that may impact on the commercial activities of your business include:

  • introduction of a specific exemption from infringement for working an invention for experimental purposes;

  • extension of the ‘springboarding’ provisions to provide exemption from infringement for acts related to obtaining regulatory approval for any product that requires regulatory approval before commercial release; and

  • introduction of a 12 month grace period for prior secret use.

The Raising the Bar Act will also bring about certain procedural changes which will impact on how patent applications will be handled before IP Australia. For example:

  • modified examination will no longer be available;

  • new applications will now be examined for utility and usefulness;

  • there will be a shorter examination/acceptance time frame of 12 months (reduced from 21 months);

  • the Commissioner will have discretion to refuse deferred acceptance of patent applications; and

  • it will no longer be possible to add subject matter to a specification after filing, except where correcting a clerical error or an obvious mistake.

There are, of course, other changes not mentioned here but the intent of this article is to illustrate those changes that may significantly impact on your business and its commercialisation activities.

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