Author: Dr David McCarthy, Patent and Trade Marks Attorney
In an effort to strengthen and improve Australia's Intellectual Property system to support innovation by encouraging investment in research and technology in Australia, the Intellectual Property Laws Amendment Bill 2012 ("Raising the Bar Bill") was introduced to Parliament in June 2011.
The Raising the Bar Bill will amend the Patents Act 1990, the Trade Marks Act 1995, the Copyright Act 1968, the Designs Act 2003 and the Plant Breeder's Rights Act 1994, to improve the standards against which intellectual property rights are assessed in Australia.
The following provides a brief summary of some of the more important patent-related reforms that are intended from the 6 schedules that make up the Raising the Bar Bill:
Schedule 1. Raising the Quality of Granted Patents
- Inventive Step. The reforms intend to raise the Australian standard for inventive step to a level that is more consistent with Australia's major trading partners. Currently the test for common general knowledge is limited to Australia (the patent area). This will be broadened to also consider common general knowledge as it exists outside of Australia. A consequence of this reform will be that, when opposing a patent application or attempting to revoke a granted patent, there will be no disadvantage from using an expert witness from outside Australia over an expert who resided in Australia as at the relevant dates.
- Utility. The requirement that a patented invention be useful will be strengthened. The patent must describe a 'specific, substantial and credible' use for the invention, a requirement based on guidelines in use by the United States Patent & Trademark Office. This is to prevent the grant of patents for speculative inventions which require too much additional research or development before they can be put into practice.
- Sufficiency. The standards set for disclosure of an invention in a patent specification will be raised. A patent specification should communicate the invention in a manner which provides sufficient detail and clarity for the invention to be performed by a person skilled in the relevant technical art. A consequence of this reform is that the level of disclosure required for a provisional specification will increase to the extent that it will require a level of disclosure closer to that required in a complete specification.
- Fair Basis. A new support requirement will be introduced which requires that:
i. There must be 'basis' in the description for each claim. A consequence is that for a claim to be entitled to a priority date which is based on a provisional application or other basic application, the subject matter of the claim must be supported by that application; and
ii. The scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art. The intention is to ensure that granted patents do not claim broader than the invention which has been disclosed.
- Examination. The grounds the Commissioner of Patents can consider in deciding whether to grant or revoke a patent will be expanded. For example, examiners will consider and report on usefulness and prior use, including the new utility requirement described above and whether the claimed subject matter meets the promise of the invention.
- Amendments. To bring Australia's amendment provisions into closer conformity with those of other major industrialised countries, the provisions will be modified to prevent applicants from adding subject matter to their applications, except where the amendment is to correct an obvious mistake or clerical error.
Schedule 2. Free Access to Patented Inventions for Regulatory Approvals and Research
- Regulatory exemption. An exemption for activities undertaken solely for the purpose of gaining regulatory approval to market or manufacture a patented technology will be introduced for all technologies, not just for pharmaceutical inventions.
- Experimental use exemption. Research and experimental activities which are related to patented inventions will be exempt from infringement. As before, commercial activities will not be exempt. Some of these activities include:
i. Determining the properties of the invention;
ii. Determining the scope of a patent claim;
iii. Improving or modifying the invention;
iv. Determining the validity of a patent or of a patent claim; and
v. Determining whether the patent would be, or has been, infringed by the doing of an act.
Schedule 3. Reducing Delays in Resolution of Patent and Trade Mark Applications
- Deadline for filing divisional applications. The deadline for filing divisional applications or for converting applications to divisional status will be three months from the date of advertisement of acceptance of the parent. As a result:
i. Divisional applications can no longer be filed up until grant of a patent;
ii. It will no longer be possible to file divisional applications from applications which are under opposition;
iii. It will no longer be possible to file a divisional innovation patent in respect of an opposed standard patent application in circumstances where it becomes clear during the opposition that the claimed invention does not possess an inventive step, but would possess an innovative step which would have qualified for innovation patent protection; and
iv. There will be less opportunity to overcome novelty objections based on earlier filed applications by the same applicant by converting the later application to a divisional application of the earlier.
Schedule 4. Assisting the Operations of the IP Profession
- Incorporation of patent attorneys. Australian patent attorney firms will be able to incorporate, provided they have at least one director who is an Australian registered patent attorney.
- Privilege. Both the Patents Act and the Trade Marks Act will be amended to extend the privilege afforded to clients of patent attorneys and trade marks attorneys to include the clients of foreign patent and trade mark attorneys, as well as to communications with third parties in circumstances where privilege would have applied if the patent or trade mark attorney were a lawyer.
Schedule 5. Improving Mechanisms for Trade Mark and Copyright Enforcement
[Our next instalment of the Wrays newsletter will include an article on the reforms in Schedule 5 and the Raising the Bar Bill as they relate to Trade Marks, Copyright and Designs]
Schedule 6. Simplifying the IP System
- Grace Period. A new 12 month grace period is included to deal with secret use which would otherwise invalidate a claim. The existing grace period has also been clarified so that it now clearly applies to earlier disclosures that fall outside the scope of a claim under consideration, but which would otherwise render the claim obvious.
- Entitlement. A patent will not be considered invalid merely because it was granted to the wrong person and the Commissioner will be allowed to rectify the Register to correct an error or omission in the Register, or to correct ownership of the patent. The new provision will apply retrospectively to existing patents.
- Omnibus Claims. It will no longer be possible to include omnibus claims as under the new provisions, claims cannot rely on references to the description or drawings "unless absolutely necessary to define the invention".
- Modified examination. Modified examination based on a corresponding patent granted in a recognised country will no longer be available under the new provisions.
The new provisions in the Raising the Bar Bill relating to patentability and specification requirements will apply to applications for which examination has not been requested by commencement of the legislation. The Raising the Bar Bill was passed by the House of Representatives on March 20, 2012. The Bill now needs to be signed by the Governor General and will come into effect 12 months from assent, in March 2013. This will mean that patent applicants will have their applications examined according to the current standards if they request examination of their applications before this time. Similarly, early national phase entry in Australia may be considered by patent applicants so that an examination request can be filed before commencement of the reforms.
If you would like to read more on the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, we encourage you to contact Wrays directly via our website, or visit the following link for further information on the Bill and parliamentary process: http://www.aph.gov.au/Parliamentary_Business/Bills_Legislation/Bills_Search_Results/Result?bId=s837