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The Intellectual Property Laws Amendment (Raising the Bar) Act
2012 was passed into law, receiving Royal Assent on 15 April 2012.
Most provisions in the Act come into effect on 15 April 2013. Some
have already come into effect, as reported in April 2012 ShelstonIP
news (link:
http://www.shelstonip.com/news_story.asp?m=4&y=2012&nsid=225).
Inventive step will be harder to establish as it will now only
be necessary that a skilled person would understand the prior art
and regard it as relevant (not ascertained). Furthermore, inventive
step will be assessed against the common general knowledge in the
art in general (as opposed to just in Australia).
With regards to requirements on a patent being
"useful", a patent specification will be required to
disclose a "specific, substantial and credible use" for
the claimed invention.
With regards to "sufficiency" requirements, a patent
specification will be required to disclose the invention in a
manner which is "clear enough and complete enough for the
invention to be performed by a person skilled in the relevant
art".
The claims of a patent will need to have "support"
from the specification, as opposed to the previous requirement of
"fair basis".
The claims during examination will have to satisfy additional
grounds for rejection, including prior use of an invention.
Amendments to a complete application will be more heavily
restricted.
It is emphasised that the new law has yet to be interpreted by
the courts. However, it is apparent that the inventive step
threshold will be raised. As a basis of comparison for the new
threshold, we believe that this is still no more than, and perhaps
less than that required by the EPO and the USPTO. As such,
applicants that have drafted their specification and claims for
prosecution in overseas jurisdictions such as Europe or the US need
not be overly concerned, for passing the European or US standard
should also satisfy the new raised Australian standard.
Ducking Under: How can I take advantage of the lower threshold
of the present law?
Patent applications will NOT be subject to the raised patent
standards in the new Bill if a request for examination is filed
before 12 months from the date of assent, that date being 15 April
2013. Therefore leading up to 15 April 2013, applicants may wish
to:
Arrange to request examination of pending applications before
15 April 2013.
Bring forward Australian national phase entry to at least two
weeks (or as soon as possible) before 15 April 2013.
Bring forward Australian convention application filing to at
least two weeks (or as soon as possible) before 15 April 2013.
As mentioned above, the inventive step standard does not appear
to be as stringent as that of Europe or the US. However, we would
still recommend all applicants to bring forward requesting
examination to reduce the risk the raised Australian standard
adversely affecting the protection obtained in Australia.
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.
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