Patent reform in Australia

On 20 March 2012 the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was passed by the House of Representatives and is expected to soon receive the Governor General’s Assent to become law. Most of the changes in the Bill will commence 12 months from Assent. Importantly, however, the changes to introduce a research exemption will commence the day after Assent.

A brief outline of the main changes are listed below.

Inventive Step (obviousness) – The current law limits to the test of obviousness to what is known in Australia. The limitation to Australia is removed by the amendments. This means that from the date of commencement the obviousness of a claimed invention will be tested against the common general knowledge of a person skilled in the relevant art anywhere in the world.

Inventive Step (obviousness) – It is permissible under the current law to combine two or more documents when raising an inventive step objection but only if a skilled person would “be reasonably expected to have ascertained, understood, regarded as relevant” the documents. Under the amended law the requirement is only that the skilled person would “be reasonably expected to have combined” the documents. This is a significantly lower test to pass and it can be expected that more objections based on two or more documents will be raised during examination and in challenges to validity.

Utility – A new section is added to the Patents Act to define the meaning of useful. It is currently a requirement that a patented invention must be useful but this is not defined and Examiners do not examine for the requirement. The new section defines what is meant by useful and gives Examiners a basis for raising objection during examination if they believe a claimed invention is not useful. The amendments provide 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” and “The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art”.

Disclosure – The Act amends the level of disclosure required in a patent specification. The new language is that a” 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 applies to provisional and complete specifications. In a practical sense it is not clear that this change will have any impact on examination.

Examination Standard – The standard for examination has changed significantly by adding the words, “on the balance of probabilities”. At present the requirement is that the Commissioner of Patents is “satisfied” that there are no objections to the grant of a patent. This has been interpreted to mean that the Commissioner (through an Examiner) is not convinced that a patent should not be granted. Essentially this gives the benefit of the doubt to the Applicant. The addition of “on the balance of probabilities” gives Examiners more power to reject an application if they are not convinced it should be allowed. The same standard will apply during re-examination and opposition.

Regulatory Approval Exemption – After the amendments it will not be an infringement of a patent to do an act that would infringe if the act is solely for the purposes of regulatory approval. However, this does not apply to pharmaceutical patents.

Experimental Use Exemption – After the amendments it will not be an infringement of a patent to do an act that would infringe if the act is for experimental purposes. Experimental purposes are defined as: 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; determining whether the patent for the invention would be, or has been, infringed by the doing of an act.

Other Amendments – Other amendments are made in relation to the filing of divisional applications, power to summon witnesses, and incorporation of Patent Attorney practices. While interesting they are not as significant as the changes outlined above. Whether these changes make a significant impact at a practical level, only time will tell.

For more information, please contact mhorsburgh@fak.com.au or T +61 7 3229 2655.