The most significant single set of reforms to Australia's intellectual property (IP) laws in years are now in place. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Act) touches every piece of intellectual property legislation in Australia, amending the Patents Act 1990 (Cth) (Patents Act), Trade Marks Act 1995 (Cth) (Trade Marks Act), Copyright Act 1968 (Cth) (Copyright Act), Designs Act 2003 (Cth) (Designs Act) and Plant Breeder's Rights Act 1994 (Cth) (Plant Breeder's Rights Act). However, the effects of the Act will be most keenly felt in the areas of patent law and trade mark law. This article provides a high level review of the key reforms in the area of patent law.
The Act includes six Schedules, each of which addresses a different aspect of IP law reform (see page 13 for further details).
GRANTING A PATENT: WHAT ARE THE KEY CHANGES RELATING TO PATENTABILITY?
Inventive step (Non-obviousness)
One of the requirements for an invention to be protected by an Australian standard patent is that it possesses an inventive step. An invention will satisfy this requirement if a person skilled in the relevant art would not, at the priority date, have considered the invention obvious in light of:
- The "common general knowledge" in the field, together with
- Pertinent "publicly available" information.
Under current law, the relevant "common general knowledge" is limited to that which exists in Australia, and "publicly available" information is limited to information that the skilled person could be reasonably expected to have "ascertained, understood and regarded as relevant". The Act will remove these limitations.
To be patentable in Australia, an invention must be useful. Under current law, an invention will not satisfy this requirement if it does not work or fails to deliver on the promises made in the patent specification.
The Act amends the Patents Act in this regard, and states that an invention will not be "useful" unless a "specific, substantial and credible use" for the invention (so far as is claimed) is disclosed in the complete specification. According to the Explanatory Memorandum, this amendment is intended to bring the Australian law of utility more in line with the meaning of "useful" in US patent law.
Under current law, a patent specification must "describe the invention fully, including the best method known to the applicant of performing the invention". A description satisfies this requirement if it enables a skilled person to produce something (even if it does not enable the skilled person to produce everything) falling within the scope of a claim without the exercise of inventive ingenuity or undue experimentation.
The Act amends the Patents Act to require that a specification disclose the invention in a manner that is clear and complete. According to the Explanatory Memorandum, this amendment is intended to be interpreted in the same way as corresponding provisions have been interpreted in the UK and EU. In those jurisdictions, a specification must disclose enough detail to allow a skilled person to fully perform the invention (not just something falling within the scope of a claim).
Australian patent law requires that each claim in a patent be "fairly based" on the matter disclosed in the patent specification. This requirement is satisfied if the scope of the claims is consistent with "what the body of the specification read as a whole discloses as the invention".
The Act replaces the fair basis requirement with a support requirement. This amendment is intended, in addition to requiring that there be appropriate "basis" in the body of the specification for each claim, to require that the scope of a claim does not exceed what is justified by the extent of the information provided to support that claim. According to the Explanatory Memorandum, this amendment is intended to align Australian law with the support requirement in the law of jurisdictions such as the UK.
WILL THE "NEW" HIGHER PATENTABILITY STANDARD APPLY TO MY PATENT OR PATENT APPLICATION?
The transitional provisions state that the:
- "Old" lower patentability standard will be applied to standard patents granted before 15 April 2013 and innovation patents certified before 15 April 2013. The "old" standards will also be applied to patent applications filed before 15 April 2013 for which:
- Examination has been requested before 15 April 2013 (in the case of standard or innovation patent applications); or
- The Commissioner of Patents has decided to examine the patent application before 15 April 2013 (in the case of innovation patent applications).
- "New" higher standards will be applied to standard and innovation patent applications for which examination has not been requested or innovation patent applications which the Commissioner of Patents has not decided to examine before 15 April 2013.
Whichever standard applies to a patent or patent application will apply to that patent or patent application throughout its entire lifespan.
WHAT TO DO?
Applicants wishing to enjoy the lower standard of patentability, and thus stronger validity over the life of their patent, should file their patent applications and request examination of that patent application before 15 April 2013. Applicants should also bring forward Patent Cooperation Treaty (PCT) national phase and Paris Convention patent application filings so that examination can be requested before 15 April 2013.
DO THE NEW INFRINGEMENT EXEMPTIONS APPLY TO PAST CONDUCT?
- No. These new exemptions only apply to acts done on or after 16 April 2012.
WHAT ARE THE KEY CHANGES RELATING TO PATENT INFRINGMENT?
The Patents Act currently includes a "springboarding" provision, which provides that exploitation of an invention solely for the purpose of obtaining regulatory approval of goods intended for therapeutic use will not amount to infringement.
- The Act introduces two additional exceptions to patent infringement:
- An amendment that broadens the "springboarding" provision referred to above to any exploitation of a patent connected with obtaining regulatory approval (not just of goods intended for therapeutic use)
- An experimental exemption that exempts acts done for experimental purposes related to the subject matter of the invention. "Experimental purposes" are defined to include determining the properties of the invention, determining the scope of a claim relating to the invention, improving or modifying the invention, determining the validity of the patent or of a claim relating to the invention and determining whether the patent for the invention would be, or has been, infringed by the doing of an act.
WHAT ARE SOME OF THE OTHER KEY PATENT LAW CHANGES?
When examining patent claims to determine whether they define a patentable invention, an examiner does not currently:
- Assess whether the utility requirement is satisfied; or
- Consider prior use when assessing novelty and inventive step.
The Act amends the Patents Act to:
- Make lack of utility a ground for refusal of a patent application
- Permit examiners to consider prior use when assessing novelty and inventive step.
Non-infringement declarations are currently uncommon in Australia because the party seeking the declaration must:
- Itself have a patent that claims the proposed matter for which it seeks the non-infringement declaration
- Pay the legal costs of all parties (unless the court orders otherwise).
The Act amends the Patents Act so that:
- The party seeking a non-infringement declaration does not need to own a patent
- Costs will be awarded in the usual manner, that is, the winning party will be entitled to their costs unless the court thinks fit to order otherwise.
The Act will impact every piece of IP legislation in Australia, with the most significant and far-reaching impact being to the Patents Act. As such, the scope of the changes brought about by the Act is too great to cover in a single article. Please contact the authors if you wish to discuss any of the key patent law reforms outlined above in more detail or if you would like to know more about the changes to the Trade Marks Act, Copyright Act, Designs Act or Plant Breeder's Rights Act.
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