Update on the IP Reform in Australia - “Raising the Bar”

Published on: 21 February 2013
by Mr. John Walker, Patent & Trademark Attorney at Dennemeyer & Associates, Australia

The Intellectual Property Laws Amendment (“Raising the Bar”) Act 2012 was enacted on 15 April 2012. This Act contains many changes that have already come into effect, as well as others that will come into effect on 15 April 2013. The six main areas addressed by this Act are set out below, and we also look at the principal changes as they affect patenting in Australia. These main areas are:

  • Raising the quality of granted patents, and some of these changes are set out later in this article
  • Free access to patented inventions for regulatory approvals and research
  • Reduction in the delays with the resolution of patent and trademark applications, particularly for oppositions and patent divisional applications
  • Modifications to the IP profession and how it operates
  • Improving mechanisms of trademark and copyright infringement
  • Simplifying the IP system and some of these changes as they relate to patents - are described later.

Patent-related amendments in summary

A stated policy behind these law changes was a view that patent protection in Australia was too easy to obtain – hence the term “Raising the Bar”. As a result, the Act raises the requirements for patentability, and the requirements of patent specifications. Among the many amendments introduced by the Act, and which come into effect on 15 April 2013, the following amendments might be of particular interest to foreign applicants.

  • Removal of territorial limitation for common general knowledge. This means that inventive step will now be assessed against the common general knowledge in general – as opposed to just in Australia. In addition, inventive step will be harder to establish as it will now only be necessary that a skilled person understood the prior art and regarded it as relevant.
  • In terms of “usefulness”, the specification is now required to disclose a “specific, substantial and credible” use for the invention.
  • Under a new sufficiency requirement (based on EP/UK provisions), the specification must disclose the invention in a way which is “clear enough and complete enough for the invention to be performed by a person skilled in the art”.
  • The “fair basis” requirement has been replaced with a new “support for the specification” requirement.
  • Amendments will be more restricted.
  • Modified examination will no longer be available.
  • The Commissioner will have greater discretion to refuse to allow deferment of acceptance.

As a general comment, the new raised inventive step threshold is still no more than, and possibly still less than that required by the EPO or USPTO. Therefore, applicants that have drafted their specification and claims to satisfy the EP or US standard should also satisfy this new raised standard in Australia.

Managing these changes

The new provisions will apply to all new applications (including divisional applications) filed on or after 15 April 2013, as well as applications pending on that date for which an examination request has not been filed. Please refer to our December 2012 Newsletter article “A key date for patent applicants in Australia – 15 April 2013where some practical patenting strategies to manage these changes were presented.

Other changes

Other changes intended to simplify the patenting system relate to amendments to the Patent Regulations. Key changes will include:

  • The time period for an applicant to request examination following Direction from the Commissioner is to be reduced from 6 to 12 months.
  • The time period for applicants to obtain acceptance of their application is to be reduced from 21 to 12 months. Foreign applicants should be mindful this is a period to gain acceptance, not a response time like in the USA or Europe.
  • The applicant must provide a Notice of Entitlement at the time of requesting examination. This Notice should provide a clear indication of the basis of entitlement of the applicant to the invention.

Future changes

Finally, it should be noted that the relevant IP bodies in Australia and New Zealand (IP Australia and IPONZ) are working towards a common and unitary patent application and examination process for both countries.

We will be keeping you informed of developments and resultant strategic implications through future articles. However, you are welcome to contact Dennemeyer & Associates in Australia at any time if you need advice or clarification on any of these aspects.

Note: The content of this update is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. Specific questions about your circumstances should be addressed to Dennemeyer & Associates in Australia.