The Australian Parliament recently passed the Intellectual Property Laws Amendment ("Raising the Bar") Act 2012 ("the Act"), which received Royal Assent on 15 April 2012. The Patent legislation changes will come into effect on 15 April 2013. The changes will implement stricter patentability and specification requirements for patent applications.
Which applications are affected?
The legislation changes will apply to (1) new applications filed on or after 15 April 2013, including divisional applications; and (2) applications pending on 15 April 2013 for which a request for examination has not been filed.
What are the legislation changes?
The changes are substantial and include the following:
Removal of territorial limitation for considering what is "common general knowledge" - The amended legislation will allow consideration of common general knowledge of the person skilled in the art outside Australia.
Removal of the words "ascertained, understood and regarded as relevant" from prior art references for inventive step - The prior art base for considering inventive step has been broadened to effectively include any prior art information, not just those that a person skilled in the art may consider relevant.
Introduction of new requirement for specifications to disclose a "specific, substantial, and credible" use for the invention - A new requirement based on USA Patent law, with the aim to stopping 'speculative' claims.
Introduction of new sufficiency requirement - A new requirement based on EP/UK provisions for the specification 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 art.
Replacement of "fair basis" requirement with new "support" requirement - An amendment to align with EP/UK provisions.
Removal of benefit of the doubt standard, and introduction of balance of probability standard for all grounds considered during examination, re-examination and opposition - The present standard which favours the applicant when considering patentability will be replaced with a "more probable than not" or "over 51% probability" standard.
Commissioner will have discretion to refuse to allow deferment of acceptance - This may lead to immediate acceptance of applications after examination, which may prevent opportunities to amend the claims prior to acceptance.
Modified examination will no longer be available.
No longer possible to add matter to specifications after filing, except when correcting a clerical error or obvious mistake
The deadline for filing all divisional applications will be restricted to three months from the date of advertisement of acceptance of the parent application - This deadline will also apply to conversion of a previously filed application into a divisional application.
Possible additional changes include the reduction of the acceptance period from a first examination report, from the current 21 month to 12 months.
Next Step For Applicants and Future Applicants
In light of these changes, we highly recommend present Applicants file a request for examination of their applications prior to 15 April 2013 to ensure those applications are subjected to the current, more lenient, patentability and specification requirements.
Future Applicants should consider filing an Australian application with an examination request prior to 15 April 2013. This may mean entering the national phase of a PCT application, filing a Convention application in Australia, or filing a divisional application before this date.
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