Australia: Important Changes To Australian Patent Law

The Australian Federal government has tabled the Patents Amendment Bill.

The Bill follows certain recommendations made recently by the Intellectual Property and Competition Review Committee and the Advisory Council on Industrial Property.

The Bill will, if enacted, have a very significant impact on patent law in Australia. The amendments made by the Bill will apply to patents for which the complete application is made on or after the day upon which the Bill becomes law.

A number of the proposed amendments will be relevant to the application phase of a patent. These are:

• The patent applicant will be required to disclose to the Commissioner of Patents the results of any searches that may be carried out by the applicant in respect of the complete application or in respect of any provisional application which may have been filed and which may have been conducted in respect of any corresponding application filed outside Australia.
• In making a decision as to whether a patent application meets the requirements of novelty and inventive step the Commissioner of Patents must now be satisfied that there are no lawful grounds of objection. Currently, the Commissioner applies a "benefit of the doubt" test in favour of the patent applicant when assessing novelty and inventive step.
• The Commissioner of Patents will be given the power to re-examine an application for a standard patent in the period between acceptance and grant. If, as a result of the re-examination the Commissioner makes an adverse report he will be able to refuse to grant the patent after giving the patent applicant a reasonable opportunity to be heard, and after providing the patent applicant with a reasonable opportunity to amend the application to remove any lawful ground for objection. An appeal to the Federal Court of Australia against a decision of the Commissioner of Patents on this basis has been made available.
• A patent applicant will not be entitled to amend a complete specification of a patent (whether a standard patent or an innovation patent) to remove a novelty, inventive step or innovative step objection if that objection arises as a result of information that should have been provided to the Commissioner as part of the duty of disclosure of search results.
• A patent applicant will automatically be entitled to an extension of time for the doing of an act, where the applicant took due care in the circumstances to ensure the doing of the act within the time period. The applicant must file an application for an extension of time within the prescribed period.
• Other amendments will have impact on both patent applications and granted patents (where the complete specification of that patent was lodged on or after the day on which the Bill becomes law). These are as follows:
• For the purposes of defining the expression "prior art base", against which novelty and inventive step are measured, the amendments mean that a person skilled in the art is no longer limited to a person skilled in the art in Australia. Similarly, "common general knowledge" is no longer restricted to common general knowledge in Australia. In other words, a worldwide prior art base is established.
• The threshold test for inventiveness has been raised. Currently, there is a local common general knowledge test, and in order to determine inventiveness it is permissible to combine that common general knowledge with information in a document publicly available anywhere in the world or information made publicly available through the doing of an act in Australia. This is provided that the skilled person could, before the priority date, reasonably be expected to have ascertained and have understood that information and regarded it as relevant to the art in Australia.

• An amendment has also been made to Section 119 of the Patents Act 1990. This section provides for a prior use defence to patent infringement and is somewhat similar to Section 64 of the UK Patents Act 1977. As currently drafted, the defence to infringement does not apply if the alleged infringer derived the subject matter of the invention from the patentee or the patentee's predecessor in title. The amendment provides that the defence will still be available if the alleged infringer derived the subject matter of the invention from information publicly available by, or with the consent of, the patentee or the patentee's predecessor in title. The information must become publicly available by reason of disclosure at a recognised exhibition, publication before a learned society or where there has been a public trial of the invention less than 12 months before the priority date of the patent in suit.

If the Bill is enacted in its current form a significant change will have been affected to the novelty and inventiveness test for patentability in Australia. Theoretically the amendments may result in fewer patents going to grant and may see those that do being subject to challenge based on more stringent novelty and inventiveness tests.