Craig Humphris, Senior Associate, Wrays Adelaide
David McCarthy, Associate, Wrays Perth
Australia is attempting to raise its patentability threshold and specification requirements. Significant amendments have been made to Australia’s patent laws through enactment of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Most provisions will take effect from 15 April 2013.
The Raising the Bar Act, which was enacted on 15 April 2012, seeks to raise the quality of granted patents to a level that is more consistent with the standards set with Australia’s major trading partners, including the U.S., Japan, and Europe. Prior to this Act, concerns were expressed in the 2008 review of the national innovation system (entitled ‘Venturous Australia’) and the Government’s response to this review (Powering Ideas: the innovation agenda for the 21st century, 12 May 2009), that the thresholds set for the grant of a patent in Australia are too low, patents are granted for inventions that are not sufficiently inventive, and that the details of inventions are not sufficiently disclosed to the public.
The Raising the Bar Act intends to raise the requirements for patentability and the requirements for patent specifications for all applications filed after 15 April 2013, and for patent applications filed prior to that date for which an examination request has not been filed prior to 15 April 2013.
A number of actions are available to patent applicants to ensure that the current and perhaps more lenient patentability and specification requirements apply to their applications and future patent grants.
File patent applications, including national phase applications, and request examination before 15 April 2013.
If a PCT application has not been filed, consider filing a Convention application in Australia and request examination before 15 April 2013.
Instead of filing a provisional application to obtain a priority date, file a complete application and request examination before 15 April 2013.
- Add all new subject matter to description/examples before 15 April 2013.
- File divisional applications and a request for examination before 15 April 2013.
- File divisional applications from opposed applications before 15 April 2013.
- If desired, convert pending applications to a divisional application before 15 April 2013
Future granted patents will still be litigated under the current patentability and specification requirements if the application was filed and had examination requested before 15 April 2013.
Find more information on the key amendments made by the Raising the Bar Act, and original article at http://www.patentdocs.org/news-from-abroad/