New Zealand: Patent changes in Australia - Take action by April 2013

Last Updated: 8 December 2012
Article by Jennifer Lucas

Amendments to the Australian Patents Act will come into force in April 2013. What are these changes and how might they affect your application?

Patent applicants who have pending Australian applications or are planning to file patents in Australia should take note of important changes to Australia's patent laws in April 2013.

In short: what do you need to know?

The changes to Australia's patent laws will mean that examination of Australian patent applications will be tougher from 15 April 2013.

By taking action prior to this date, you can ensure that your Australian patent application is examined under the less strict requirements of the existing laws.

If you have a pending Australian patent application or are planning on filing a patent application in Australia within the next year then you should consider taking the following action on or before 12 April 2013;

  • File any new patent applications, together with a Request for Examination.
  • File any Australian national phase applications from a PCT, even if 12 April 2013 is before the 31 month deadline for doing so. These national phase applications should also be accompanied by a Request for Examination.
  • Request Examination of any applications currently pending.
  • File any divisional applications you may require, together with a Request for Examination.
  • Make any necessary amendments to pending applications to add descriptive matter to the specification as needed.

For more detailed information about the changes, or advice regarding your specific situation please contact one of our professional staff. James & Wells will endeavour to contact all clients that may be affected by the changes, but your early enquiry is very welcome.

The "Raising the Bar" Act

From 15 April 2013, changes to the Australian Patents Act will come into play following the passing of the "Raising the Bar" Act 2012.

The "Raising the Bar" Act includes a general tightening up of what is and is not allowable during the patent application process, both from an administrative perspective and from a patentability perspective.

The changes affecting patentability have been devised with the intention of raising the quality of granted patents in Australia. Some of the key changes in relation to patent applications are discussed below.

Inventive and Innovative Step

Under the current Act, prior art documents that can be considered when assessing an application's inventiveness (or innovativeness) have to be "ascertained, understood and regarded as relevant" by a skilled person. This means that some published documents cannot be used against an application if the documents do not fulfil these criteria.

Under the new amendments, this requirement is removed, meaning all information that was publically available at the time the application was filed may be considered in determining inventiveness.

In addition to more documents being available for consideration, the current geographical limitation imposed when deciding what is "common general knowledge" has been removed to expand the knowledge base from information known in Australia only, to a worldwide level.

The consequence of both these changes is that an examiner is able to draw from a larger pool of information when objecting that an invention lacks an inventive / innovative step over what is currently known.

Both of the above changes are likely to mean that applicants encounter more objections based on prior art during the course of examination.

Disclosure of the invention

A number of requirements for increased disclosure within a patent application specification (and a priority document) have been introduced to the Act. Both the specification and any priority document must now be in a form that discloses the invention in a manner which is "clear enough and complete enough for the invention to be performed by a person who is skilled in the relevant art".

Under the new Act, the claims of an application will need to be "fully supported" by the description, as opposed to merely being "fairly based" on the description as is the current requirement.

The current "fair basis" rule requires the claims to be consistent with the description of the invention in the specification. The claims can cover a broader scope than the preferred embodiments outlined in the description as long as the scope of the claims has basis in the description.

The "fully supported" requirement is conceptually similar to the fair basis requirement but is likely to be more stringent in practice. To be "fully supported" there must be basis in the description for each claim and 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 change aligns the Australian law more closely with the UK law. One of the biggest drivers for this change is that UK case law will be able to be applied to decisions relating to whether claims in Australia are fully supported. Currently this plethora of case law cannot be utilised due to the different meanings between "fair basis" and "full support".

Additionally, the disclosure must also disclose a "specific, substantial and credible" use for the invention. The intention of this amendment is to prevent the claiming of speculative inventions that would not be able to be put into practice without further experimentation on the part of the reader.

To ensure that all pending claims in Australia are "fully supported" and that the invention has a "credible use", every effort must be made to ensure that the description as filed includes details of any variations and alternatives. A full description of the essential features of the invention, including how the invention is to be used should be included in the application.

It is now even more essential to provide your attorney with as much information about your invention as possible. Once the new law commences it will become more difficult to justify the allowability of a claim that does not have a comprehensive disclosure to back it up and, as discussed below, adding new information to a pending application will become more difficult.

Amendment to the application

This tightening up of disclosure requirements is reflected in changes to what is considered an "allowable" amendment to a pending application.

From 15 April 2013, amendment of a complete specification will not be allowed if it inserts matter that extends beyond what was disclosed at the time of filing the specification. This limitation should encourage applicants to provide a full disclosure of all the elements in the initial application as filed. The amendment also seeks to prevent applicants from gaining protection for an invention that was either not contemplated or disclosed at the time of filing.

For existing applications, it is therefore essential that all aspects of your invention, including any improvements or modifications since the patent specification was prepared, are disclosed to your attorney as soon as possible. A decision can then be made whether it is necessary to amend your application before the April deadline.

For future applications, it will be even more important to fully inform your patent attorney of the invention and the different ways you envisage that it could be put into practice.

Divisional Applications

Currently a divisional application may be filed at any time before the grant of a patent application. Under the new amendments, any divisional application must be filed within three months of acceptance of an application. The main aim of this change is to ensure that divisional applications cannot be filed late into opposition proceedings.

No More Modified Examination

Modified examination lets you base the examination of an Australian application on a corresponding granted patent in one of a number of overseas countries, provided the application itself is in the same format.

From April 2013 this option will no longer be available and all applications will undergo a standard examination. The risk of modified examination was always that a resulting granted Australian patent may not actually be valid if challenge under Australian law. Now this option has been removed, all applications will be subject to the same criteria for acceptance.

Methods for speeding up examination of an Australian application will remain available and you should ask your patent attorney for advice if this is required.

Exemptions for Research and Regulatory Use

An exemption from patent infringement is currently in place for the use of patented pharmaceutical products and processes for the purposes of gaining regulatory approval. This exemption is being extended to relate to all technologies where regulatory approval is required, not just pharmaceuticals.

A research exemption is also being put in place whereby it will no longer be an infringement of a patent for a party to undertake research activities where the main purpose is to gain new knowledge, improve on or modify the invention. This research exemption is not technology specific.

In Summary

Examination is Australia is likely to get more difficult overall from April 2013. It is expected that patent applicants everywhere will be attempting to file new applications, amend applications and request examination in large numbers before the April deadline. Typically, instructions will be processed in the order they are received. It therefore makes sense to get your Australian applications in order sooner rather than later.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.

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