Australian Patent Law Changes – Deadline: 12 April 2013
Changes to the standard of patentability and validity come into effect on 15 April 2013, setting a deadline of 12 April 2013 for requesting examination to take advantage of existing more lenient standards.
Summary Of Changes To Australian Patent Law And Practice
Important changes to the Australian intellectual property system come into effect on 15 April 2013.
The Intellectual Property Amendment (Raising the Bar) Act 2012 seeks to raise the quality of granted patents by changing the tests for patentability and tightening examination and opposition procedures.
As the changes will apply to all Australian patent applications on which examination has not been requested before 15 April 2013, there is an opportunity for applicants to act now and have their applications considered under the present, more lenient standards.
Patentability
The Raising the Bar Act makes a number of significant changes to the tests for patentability, including:
- Raising the inventive step threshold – Common general knowledge (CGK) is being expanded to include information from anywhere in the world. Further, any information publically available prior to the priority date may be combined with the CGK when assessing inventive step. In contrast, the present standard restricts information to that which a skilled person could be reasonably expected to have ascertained, understood, and regarded as relevant.
- Usefulness – The specification must disclose a “specific, substantial and credible use”.
- Enablement – The specification must disclose the invention in a manner that is “clear enough and complete enough” for the invention to be performed by a skilled person.
- Fair Basis (Support) – The claims must be “supported by matter disclosed in the specification”, in contrast to the present “fairly based” requirement. The new requirement will be applicable for establishing priority, making amendments, and internal support for the claims.
Examination
Changes to examination procedure will include:
- Period for requesting examination following a Direction to Request Examination is being shortened from 6 months to 2 months.
- Examination period from first examination report date for placing an application in order for acceptance is being shortened from 21 months to 12 months, minimising the ability to await prosecution outcomes in foreign jurisdictions.
- Amendments that extend the scope of the disclosure will not be allowed, even if there is no impact on the claims. Presently it is possible to amend the specification provided that the amendment does not result in any new subject matter being claimed.
- Divisional applications must be filed before the expiry of 3 months after the date of advertisement of acceptance of the parent application. It will no longer be possible to file divisionals beyond that 3 month period, such as during an opposition.
- Modified examination and deferment of examination no longer available.
Urgent Action Available
As 15 April 2013 is a Monday, applicants of pending applications may wish to voluntarily request examination before 12 April 2013 in order to have applications considered under the present patentability and examination standards. Applicants of International (PCT) applications may wish to consider entering the national phase in Australia early and voluntarily requesting examination prior to this date.
For further reading, see IP Australia’s summary of changes entitled “Intellectual Property Reform in Australia”, which is published on their website.
Please contact Cotters if you would like any further information about the changes or if you wish to request examination on any pending patent applications.
By Paul Mahony and Marcus Dalton
Cotters Patent & Trade Mark Attorneys
14 March 2013
