The Australian Government has now issued details of significant
changes to the Intellectual property regime in Australia. The
changes are numerous and include changes to raise the quality of
granted patents, improve access to patented inventions for research
and regulatory purposes, tighten up divisional practice, increase
consistency between the Patent Office and the Courts, and improve
legal privilege for foreign applicants, among others.
The changes to the standard of patentability will have
significant and lasting impact upon applicants. It has generally
been accepted that the standard of patentability in Australia has
not advanced in step with its major trading partners and as a
consequence, it is now too easy to obtain patent protection in
Australia. A summary of the changes made in an attempt to address
this are as follows:
i) The changes will remove restrictions on the information and
background knowledge taken into account when assessing inventive
step. Currently, prior art used for the purposes of assessing the
inventive step must be 'ascertained, understood and regarded as
relevant' by a skilled person in the art. It will now only be
necessary that a skilled person would understand and regard the
prior art as relevant. The requirement that a document be
ascertained, or located by a skilled person, will be removed,
widening the prior art base considerably.
Further, the assessment of the "common general
knowledge" of an ordinary skilled worker in the art will no
longer be restricted to Australia, but will be assessed against an
undefined but apparently more international standard of
"common general knowledge".
ii) The changes will bolster the requirement that the
specification adequately explains how the invention works. From now
on a 'specific, substantial and credible' use will need to
be demonstrated in the specification.
iii) The changes will now require that a claim is enabled across
its whole scope, as compared to the present situation where it is
merely necessary to enable something within the scope of the
iv) The peculiar Australian requirement that the claims are
'fairly based' on the description will be replaced with a
more generic requirement that the claims find 'support' in
the specification. The support requirement would be similar to that
in other jurisdictions.
v) The changes also expand the grounds that can be considered
during examination, to make them more consistent with the grounds
available to the Courts. For example, during examination, it will
become possible to consider prior use of an invention. All aspects
of examination will be considered under a "balance of
probabilities" test, rather than giving the applicant the
benefit of the doubt.
Very significantly, the transitional provisions as they are
currently set out will mean that the old lower patentability
standard will be applied to applications where examination has been
requested at the commencement date of the changes, whereas the new,
tougher standard will be applied to those cases where examination
is not requested at commencement date of the changes. Of the utmost
importance is the fact that the standard that applies at the
commencement date of the changes will apply to that particular case
for the life of the patent. Not only will cases under the
old regime have an easier standard of examination than those under
the new regime, they will be harder to invalidate over their
Fortunately, there is a fixed period of 12 months from the date
the changes pass into law (yet to be advised) until the time they
Applicants wishing to enjoy the lower standard of patentability,
and thus stronger validity over the life of the patent should
ensure they bring forward examination requests, once the
commencement date is known. It may even be worthwhile to consider
bringing forward PCT national phase and Paris Convention filings so
that examination can be requested in time.
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