Changes to Australian patent law & practice7 March 2013
Relevant changes to the Australian patent law will come into effect on 15 April 2013 as a result of “The Intellectual Property Laws Amendment Act 2012”.
Some of these changes will result detrimental for patent applicants.
We are now going to summarize the most relevant changes and to suggest some strategies:
- Inventive step test
The scope of admissible prior art will be expanded and it will be more difficult to overcome an official objection or opposition based on lack of inventive step.
As a matter of fact, whilst currently only common general knowledge in Australia can be considered for the purpose of inventive step, with the new regulation general knowledge from anywhere in the world will be taken into consideration. This is actually aligned with the practice followed in Europe, Japan, US, etc…
Moreover, whilst currently only prior art information “ascertained, understood and regarded as relevant from the skilled person” can be taken into consideration for evaluating the inventive step, the new regulation will removed such limitation, enabling all prior art information to be considered, regardless of the skilled person judgement. As a matter of fact, while a skilled person will be deemed to be aware of all publiclyavailable prior art information, such information may still be excluded from obviousness considerations if it can be shown that the skilled person could not have appreciated its relevance.
- Shorter period for gaining acceptance (allowance)
The accaeptance (allowance) deadline will be shortened from 21 months to 12 months from receipt of the first examination report.
The reform introduces the new requirement of “utility”, The specification will have to disclose a “specific, substantial and credible” use.
- Sufficency of disclosure
The new regulation states that a 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 language is taken directly from the corresponding provision in the United Kingdom legislation. There i san expectation that to meet this requirement, the specification should enable the claimed invention to be produced across the full scope of each claim.
- The requirement of Support replaces the “fair basis” one
Currently the claims must be “fairly based” on the description, substantially alligned with it. With the new rules the claims shall be “supported by matter disclosed” in the specification. Consequently, all claims shall be supported by the specification and the scope of the claims must not be broader than is justified by the extent of the description. The requirement is similar to that of EPC law.
- Grounds for examination
The rounds considered durino examination will now include utility and prior use.
- Standards of proof
The Commisssioner, in examination, opposition and re-examination proceedings will apply the higher standard of proof of “balance of probabilities”. Currently issues are decided in favour of the applicant un less the commissioner is “satisfied “that a ground has been made out.
- Restrictions on amendments
An amendment of a specification to insert new subject matter will not be permitted, even if the subject matter is not claimed.
- Modified examination
It will no longer be possibile to request modified examination or deferral of examination.
- Omnibus claims
It will no longer be possibile to define an invention by reference to the descriptions and drawings, except where the invention can only be defined by reference to a specific detail in the specification. This practice will be similar to EPC law.
- Postponement of the acceptance
Even if the applicant may still request the postponement of the acceptance of an application, the Commissioner will have the discretion whether to allow or not such request. Moreover, the commisioner will also have the discretion to postpone the acceptance, even if not requested by the applicant.
The new rules will apply not only to patent applications filed on or after 15 April 2013, but also to existing application filed before but examined on or after 15 April 2013.
Given the new law could make invalidità easier to establish, one clear strategy will be, where practicable, to file Australian patent applications and request examination before 15 April 2013 – thereby precluding those applications from the more stringent validità criteria that will otherwise apply.
For pending Australian applications:
- request examination, deferment of acceptance prior to 15 April 2013;
- file any required divisional spplication and request examination prior to 15 April 2013.
For pending PCT application:
- enter the national phase in Australia and request examination prior to 15 April 2013.
For applications which may lack sufficient disclosure or identification of utility:
- amend the specifications prior to 15 April 2013 to clearly identify the utility of the invention and to provide the required “support” for the claims.