The Intellectual Property Laws Amendment (Raising the Bar) Act 2011 received Royal Assent on 15 April 2012. However, most provisions of the Act do not take effect until 15 April 2013. Accordingly, it is very important to understand what changes are coming into effect on 15 April 2013 and how they may impact on currently pending and new Australian patent applications.
Please note that the new infringement exemptions provided in the Act are now effective. More information concerning those exemptions can be found in an earlier article appearing in our newsletter Inspire.
A summary of the changes applicable to patents as of 15 April 2013 is set out below:
- Section 7 has been amended so that the common general knowledge taken into account when assessing inventive step will no longer be limited to common general knowledge in Australia. The common general knowledge applicable as of 15 April 2013 will be that of a person skilled in the art as it existed before the priority date of the relevant claim, without geographical limitations.
- The prior art base for the purpose of assessing inventive step of an invention will no longer be restricted to information that would be "ascertained, understood and regarded as relevant" by a skilled person in the art. Under the amended legislation, the prior art base for assessing inventive step will be information made publicly available before the relevant priority date. According to the Explanatory Memorandum associated with the Bill, the changes are not intended to substantially change the operation of the existing tests for inventive step as applied to the prior art base or to permit hindsight analysis. While a skilled person is essentially deemed to be aware of and to have carefully read the publically available information, the inventive step tests are otherwise applied in the context of what the skilled person would have known and done before the priority date of the claim in question. It is thus expected that the test will therefor continue to take account of factors such as whether the skilled person would have understood and appreciated the relevance of the prior art to the problem the invention was seeking to solve and whether it would be considered a worthy starting point for further investigation or development. The teachings of individual pieces of prior art information can still only be combined where the skilled person would have reasonably been expected to have combined them.
- Section 18 addresses what is a patentable invention. For both standard and innovation patents there is a requirement that an invention be useful. New section 7A now defines that an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification. The disclosure "must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art". The Explanatory Memorandum associated with the Bill indicates that the intent is that the language "specific, substantial and credible" be given the same meaning as is currently given by the US courts and the USPTO. 'Specific' means a use specific to the subject matter claimed and can "provide a well-defined and particular benefit to the public"1. 'Substantial' means the claimed invention does not require further research to identify or reasonably confirm a 'real world use'. "An application must show that an invention is useful to the public as disclosed in its current form, not that it prove useful at some future date after further research"2. An asserted use will be 'credible' "unless there is evidence that the invention is inoperative (i.e. does not operate to produce the results claimed by the patent application) or there is reason to doubt the objective truth of the statement in the specification."3
- Under the amended legislation a provisional specification must 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. This now mirrors the disclosure requirements to obtain an earlier priority date for complete patent applications filed in Australia. A provisional specification must provide a comprehensive enabling disclosure.
- A complete patent specification must also 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 effect of this is that sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention.
- Amended section 40(2)(a) requires enablement across the full width of the claims. The new wording of this section is similar to section 14(3) of the UK patents legislation4 . The wording is also similar to article 83 of the European Patent Convention5, which has been interpreted with similar effect. According to the Explanatory Memorandum, the intention is that section 40(2)(a) be given, as close as is practicable, the same effect as the corresponding provisions of the UK legislation and the European Patent Convention.
- A specification that provides a single example of the invention may satisfy the new requirements, but only where the skilled person can extend the teaching of the specification to produce the invention across the full width of the claims, without undue burden, or the need for further invention. However, it is expected to be more likely that, where the claims are broad, the specification will need to give a number of examples or describe alternative embodiments or variations extending over the full scope of the claims. This will ensure that the monopoly extends only to that which could reasonably be said to be disclosed and no further.
- Section 40(2)(a) continues to require that a complete specification disclose the best method known to the applicant of performing the invention.
- Amended section 40(3) no longer includes the requirement that the claims must be "fairly based on the matter described". Instead this section now requires that the claims must be "supported by matter disclosed". The amended language is intended to align the Australian requirement with those of overseas jurisdictions (such as the UK). In such jurisdictions, language such as 'supported by'6 or 'fully supported by'7 the description is used. The terms 'support' and 'full support' pick up two important concepts.8 There must be a 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. There must also be consistency, or basis, for each claim in the description.
- Amended section 43 aligns the requirement for securing a priority date from an earlier filed application with the requirement for disclosure in a complete patent application. This ensures that an applicant cannot secure a priority date on the basis of a disclosure in a provisional or other relevant specification that is less complete than required in a complete specification.
- New section 43A provides that the Commissioner (i.e. the Patent Office) may conduct a preliminary search and opinion on a standard patent application. More details concerning this "preliminary search and opinion" will be available once the related Regulations are prescribed. However it is expected that the "preliminary search and opinion" will be similar to an international search and preliminary examination conducted under the PCT. The preliminary report would be issued to the applicant before the application was OPI and published with that application at OPI.
- The patentability requirements considered during examination will now be extended to include consideration of whether a claimed invention is useful. Please note the amendments to section 18 discussed above in relation to "usefulness".
- Prior use of an invention will also now be considered during examination. Under the amended legislation, the Commissioner will be able to consider all "prior art information"9, including information publicly available by the doing of an act.
Balance of Probabilities
- Under the new patentability requirements, Australian Patent Examiners will apply a different test to applicable applications when determining whether to accept them for patent grant. This new test will require the examiners to be satisfied "on the balance of probabilities" that a patent granted on the application will be valid. This differs from the current test where an examiner is required to accept a patent application "unless it appears practically certain"10 or "clear"11 that it would be invalid. Similarly, the Patent Office will only be required to certify an applicable innovation patent when satisfied, on the balance of probabilities, that the innovation patent is valid. When the Patent Office is not so satisfied, then the innovation patent can be revoked.
- The higher "on the balance of probabilities" standard of proof will be applied by the Patent Office when deciding whether or not an application should be refused in whole or part because a ground of opposition has been made out.
- The new patentability requirements bring the standard of proof required by the Patent Office when examining applications, re-examining applications and patents, when deciding opposition matters on both standard applications and innovation patents and when certifying innovation patents, into line with the standard of proof currently required for deciding a matter by Australian courts.
Divisional Patent Applications
- Currently there are two deadlines for filing divisional patent applications. The first deadline allows for the filing of a divisional application for an invention disclosed in the parent standard patent specification as originally filed. Such a divisional patent application must be filed within 3 months of the date of advertisement of acceptance of the parent application. The second deadline allows for the filing of a divisional application for an invention falling within the scope of the accepted claims of the parent standard application. Such a divisional patent application must be filed before grant of a patent on the parent application. Under the current arrangements, it is possible for an applicant to file a divisional application (with restricted claims scope) during opposition proceedings. A standard patent application can also be converted to a divisional patent application at any time up to grant of the parent patent application. Divisional patent applications can be used tactically to maintain pending patent protection for an invention the subject of an opposition proceeding.
- The amended provisions restrict the deadline for filing a divisional application to within 3 months from the date of advertisement of acceptance of the parent standard application. It will no longer be possible to file a divisional patent application (with restricted claim scope) after this initial date.
- The amended divisional filing deadline means that an applicant will be unable to file a divisional patent application or convert an existing patent application to a divisional application beyond the deadline for commencing opposition proceedings.
- The amended legislation also provides for the related Regulations to require that certain details are provided with the divisional application and to restrict the time in which a standard application can be converted to a divisional application. We will provide more information on these matters when the Regulations are published.
- The changes to the provisions relation to re-examination are intended to increase the transparency of the re-examination process. More importantly however, the amendments allow the Patent Office to consider under re-examination all of the substantive grounds considered during examination of standard and innovation patents. This means that in addition to considering novelty and inventive step, the Patent Office will be able to consider whether the invention is a manner of manufacture, is useful, is for a human being or is for a process for creating human beings. The Patent Office will also be able to consider whether the specification adequately discloses and supports the claimed invention.
- The amended legislation expands the grounds for revocation of an innovation patent following re-examination to include all substantive grounds considered during examination. This includes consideration of prior use when re-examining for novelty and innovative step.
- Under the amended legislation the Patent Office will be able to refuse an applicant's request for leave to withdraw their opposed patent application. A decision by the Commissioner to refuse leave to withdraw an opposed patent application is appealable to the Administrative Appeals Tribunal.
- The amended legislation expands the grounds for opposition of an innovation patent to include the ground that the invention is not useful. Previously, such a ground could not be considered during opposition despite it being a ground for revocation in the courts.
- Changes to the amendment provisions will prevent an amendment to a complete patent specification to add new matter that would go beyond the disclosure contained in the specification at its filing date. The intention of this amendment is to prevent an applicant from being able to remedy a situation where the specification as filed contained an inadequate description of the invention.
- The amended legislation also provides for the related Regulations to prescribe any documents that form part of the baseline disclosures against which any proposed amendment to a specification will be assessed.
- The amended legislation provides that a court may consider and decide on amendments to a patent application during an appeal from a decision of the Commissioner.
Power of the Commissioner
- As of 15 April 2013 the threshold test to be satisfied before the Commissioner can exercise her power to summon witnesses, require production of documents or articles has been raised.
- Non-criminal sanctions will replace criminal sanctions for non-compliance with a summons or notice to produce documents or articles.
- As of 15 April 2013 it will no longer be possible to file a request to defer examination or to request modified examination. However, if modified examination has already been requested or if modified examination has commenced and the application has not been accepted, then the Division 2 of Part 2 of Chapter 3 and subsection 49(6) of the Patents Act 1990 as in force before commencement continues to apply.
Grace Period Provisions
- The current "grace period" provisions under section 24 have been criticized for not applying to information that could deprive an invention of inventive or innovative step. This has arisen because of the reference in current section 24 to "information made publicly available, through any publication or use of the invention". Upon commencement on 15 April 2013, any "information made publicly available" by or with the consent of the patentee or a predecessor in title within the 12 months before the date of filing a complete application will be disregarded for the purpose of assessing novelty, inventive step or innovative step. This aligns the Australian "grace period" provisions with that of the US, Japan and Canada.
- It should be noted that the "grace period" provisions only apply when a complete patent application in Australia is filed within the 12 month period. A "complete patent application in Australia" includes an international patent application that designates Australia.
- Amended section 9(d)(e) establishes that the "grace period" provisions (section 24) apply to any secret use of the invention made within 12 months of the filing date of the complete patent application. Hence, under the amended legislation 'secret use' will be treated in the same way as 'public use' of the invention is treated.
- Previously, the courts have confirmed that grant of a patent to a person named in the patent application as an applicant or inventor, who is not entitled to it, or to some but not all persons who are entitled to it, renders the patent void.12
- New section 22A specifies that a patent is not invalid merely because the patent was granted to a person who was not entitled to it.
Disputes between Applicants
- Current section 32 provides the Patent Office with the power to determine how an application should proceed when there is a dispute between any "2 or more interested parties". Amended section 32(1) will only operate when there is a dispute between "any 2 or more applicants".
- New section 32(2) provides that the Patent Office may make a determination as to how an application should proceed even in circumstances where the application has lapsed.
- New section 40(3A) requires that claims must not rely on references to the description or drawing(s) except when absolutely necessary to define the invention. This amendment will prevent the routine inclusion of omnibus claims.
- Australia's current requirements for disregarding earlier applications for the purpose of a priority claim differ from the requirements in Europe and the United Kingdom. These jurisdictions automatically disregard an earlier application where the application has been withdrawn, abandoned or refused without becoming open for public inspection and without leaving any rights outstanding or serving as a basis for claiming priority. In contrast, in Australia an earlier application will only be disregarded if filed in the same Convention country as the priority application. The amended legislation provides that an earlier application made in another convention country must be disregarded if it was made in the prescribe period and has been withdrawn, abandoned or refused, without becoming open for public inspection or serving as a basis for claiming priority. The prescribed period will be more than 12 months from the filing date of the Convention or PCT application.
Postponement of Acceptance
- Currently, the Patent Office must postpone acceptance of an application under section 49(3) if requested to do so. The amended legislation provides the Patent Office with the discretion not to act on a request for postponement of acceptance filed by the applicant. Furthermore, the Patent Office will be able to specify a date to which acceptance of the application is to be postponed.
- The amendment legislation also provides the Patent Office with the power to postpone acceptance even if the applicant has not requested it. For example, there may be circumstances where there is a dispute about ownership of a patent application, and it is appropriate to postpone acceptance and then grant the patent to the correctly entitled persons, once the dispute is resolved.
Revocation of Acceptance
- New section 50A will permit the Patent Office to revoke acceptance of a patent application if satisfied, on the balance of probabilities, that the application should not have been accepted, and if it is reasonable to revoke acceptance in all the circumstances. Such a decision to revoke acceptance will not be appealable to the Federal Court. The amendment is cast broadly to provide the Patent Office with sufficient flexibility to address a wide variety of circumstances in which an administrative error may be made, and take into account all relevant interests. If the power is exercised, the patent application is taken never to have been accepted. The Patent Office will remedy the error and will recommence examination.
- Where acceptance is revoked, the normal period for accepting the application will be extended. This will ensure that the applicant has sufficient time to resolve any outstanding issues raised by the Patent Office.
Revocation of a Certificate of Examination
- New section 101EA will permit the Patent Office to revoke a decision to certify an innovation patent. The policy intent of this amendment is the same as the amendment permitting the Patent Office to revoke acceptance of a standard patent application.
- Currently, a person is able to apply to a court for a declaration that the exploitation of an invention would not infringe the claims of a particular complete specification. This is known as a "non-infringement declaration". The ability to obtain such a declaration is intended to assist manufacturers who are proposing to make an article or use a process, but who cannot obtain clear legal advice or an assurance from a patentee that their proposed activities would not infringe a patent. Such declarations are seldom sought in Australia. The amended legislation provides that the person seeking the declaration need not have sought or been granted a patent themselves or order to make use of the provision, clarifies that a declaration can apply to a present, current or past act, provides that a declaration may not be sought until a standard patent for the invention described in the complete specification has been granted or an innovation patent for the innovation described in the complete specification has been certified, provides that the person seeking the declaration may also seek revocation of the patent and provides that costs will be awarded in the usual manner.
- All references to "sealing" of patents have been removed in the amended legislation. Instead, particulars of a patent will be entered in the Register and it will be possible to obtain a certified copy of an extract of the Register as evidence of patent grant.
Patent Attorney Incorporation
- The amended legislation provides that an Australian company will be able to be registered as a patent attorney provided certain requirements are met. The first and key requirement is that an incorporated patent attorney (i.e. a company) must have at least one patent attorney director. A patent attorney director must be both validly appointed as a company director and registered as an individual patent attorney. The second key requirement is that the company must notify the Designated Manager of its intention to act as a patent attorney.
- Various other amendments have been made to relevant sections as a consequence of the introduction of an "incorporated patent attorney".
- New offences have been introduced relating to companies that act or describe themselves as patent attorneys. New sanctions have also been introduced for a member of an incorporated patent attorney who drafts patent documents without being instructed or supervised by a registered patent attorney.
- The amendments to section 200 will extend to patent attorneys the same client privilege as is currently extended to legal professionals. The privilege is intended to apply in the same way and to the same extent for patent attorneys as it does for lawyers. However, the scope of privilege is limited to only those fields in which patent attorneys have specialist qualifications and knowledge. To this end, the amended legislation includes a definition of "intellectual property advice" and privilege is restricted to a communication, record or document made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client. A reference to a "registered patent attorney" includes a reference to an individual authorised to do patent work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided.
Whole of Contents
- As a general rule, the prior art base for the purpose of assessing novelty of a claim is restricted to information published and public acts performed before the priority date of the claim in question. However, complete patent specifications filed in Australia (including a PCT application designating Australia) with an earlier priority date but a later publication date than the priority date of the claim under consideration, are relevant when assessing novelty. Such complete patent specifications are commonly called "whole of contents" citations. The amended legislation makes two changes to the definition of the "prior art base" for assessing novelty. The first amendment clarifies that a "whole of contents" citation must have been published on or after the priority date of the claim under consideration. The second amendment specifies that the information considered is the information in the "whole of contents" citation as published.
Other Important Changes
- It is expected that a number of other changes to the patent system in Australia will be introduced by way of amendments to the Patents Regulations. For example, it has been foreshadowed that the deadline for obtaining acceptance of an Australian patent application following issue of a first examination report will change. It is likely that the current 21 month deadline will be reduced to only 12 months. It is also expected that the deadline for requesting examination following issue of a direction from the Patent Office to request examination, will reduce from the current 6 months to only 2 months. We will provide full information of likely further changes when the Regulations are published.
How to Avoid the Impact of the Changes?
Before 15 April 2013, every Australian patent applicant and/or their advisor should consider the possibility of taking action to avoid the impact of the amended legislation.
The following actions should be considered and taken prior to 15 April 2013 if an applicant wants to avail themselves of the current more lenient patentability requirements or if they wish to avoid other procedural restrictions or changes:
- Request examination of any pending patent applications.
- Request deferment of acceptance of any pending patent applications.
- Enter the national phase in Australia of any pending international patent applications and request examination at the time of national phase entry.
- File a Convention patent application in Australia and request examination at the time of filing.
- File a complete patent application in Australia (may be related to an Australian provisional patent application) and request examination.
- File any required divisional patent applications and request examination. An applicant of any opposed patent application should carefully consider the need to file a divisional patent application prior to 15 April 2013.
- Amend any pending applications that need to be converted to divisional applications and request examination (if not already requested).
- If an applicant intends to withdraw an opposed application, they should file any required divisional applications (with an examination request) and then withdraw the opposed application prior to 15 April 2013 to avoid the need to obtain consent from the Patent Office.
- Request modified examination of a complete application if desired.
- Ensure any provisional patent application intended for completion after 15 April 2013 includes sufficient description to properly support the claims of the proposed complete patent application.
- Consider the need to amend any pending patent applications to include additional description, embodiments or examples to properly support the claims or to describe the utility of the invention.
1 In re Fisher, 421 F.3d 1365, 1371, 76USPQ2d, 1230 (Fed. Cir. 2005).
2 In re Fisher, 421 F.3d at 1371, 76 USPC2d at 1371.
3 In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
4 Patents Act 1977 (UK).
5 Convention on the Grant of European Patents (European Patent Convention), opened for signature 5 October 1973, 1065 UNTS 199 (entered into force 7 October 1977).
6 European Patent Convention, Article 84; UK Patents Act 1977, paragraph 14 (5)(c).
7 Patent Cooperation Treaty, Article 6; draft Substantive Patent Law Treaty, May 2004, Article 10(3)
8 Guidelines for Examination in the European Patent Office, European Patent Office, April 2009, at 6.1, accessed 6 November 2009.
9 Section 7 and schedule 1 (definitions of 'prior art base' and 'prior art information'), Patents Act.
10 Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 244.
11 F Hoffman-la Roche V New England Biolabs 99 FCR 56 at 66-70 and the cases cited therein.
12 University of British Columbia v, Conor Medsystems Inc  FCAFC 154.
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.