Australia has typically been viewed as a desirable venue in which to pursue patents, in part because the rules were more lenient than in other venues, including those at the United States Patent and Trademark Office. However, significant amendments have been made to Australia's IP laws through the enactment of the Intellectual Property Laws Amendment Act 2012 (the"Act"). The majority of the substantive changes in the Act relate to raising Australia's patentability threshold and specification requirements. The changes will take effect on April 15, 2013, and will apply to all patent applications filed after that date, as well as those patent applications filed prior to April 15, 2013, for which an examination has not been requested. Consider the potential impact of these changes on how you choose to pursue your IP matters in Australia.

Changes in the Act

The Act seeks to raise the quality of granted Australian patents to a level that is more consistent with the standards set by Australia's major trading partners, including the United States, Japan and Europe. Concerns were expressed in the 2008 Review of the National Innovation system that the thresholds set for the grant of a patent in Australia were too low, patents were granted for inventions that were not sufficiently inventive, and that the details of inventions were not sufficiently disclosed to the public.

To address these issues, the following changes will take effect on April 15, 2013:

  • Higher threshold for obviousness
  • New ground of U.S.-style utility
  • Higher threshold for written description and enablement
  • Applicants cannot amend specification to add subject matter
  • Higher standard of proof for allowance - balance of probabilities
  • Prior use, usefulness and utility assessed at examination
  • Omnibus claims are no longer allowed
  • Modified examination is eliminated

Recommendations for Patent Applicants in Australia

A number of actions are recommended to patent applicants to ensure that the current, and perhaps more lenient, patentability and specification requirements apply to their applications and future granted patents:

  • If you have a pending complete patent application in Australia, file a request for examination before April 15, 2013, if not already filed.
  • File complete patent applications, including national phase applications, and request examination before April 15, 2013.
  • If a PCT application has not yet been filed, consider proactively filing a Convention application in Australia, and request examination before April 15, 2013.
  • Instead of filing a provisional application to obtain a priority date, file a complete application and request examination before April 15, 2013.
  • Add all new subject matter to description/examples before April 15, 2013.
  • File divisional applications and a request for examination before April 15, 2013.
  • File divisional applications from opposed applications before April 15, 2013.
  • If desired, convert pending applications to divisional applications before April 15, 2013.

Further, draft amendments to the Patents Regulations 1991 published on September 21, 2012, propose that a new search fee be introduced, requiring patent applicants to pay an additional AU$1400 in cases where there is no search available from another source, such as a prior PCT application or a prior examined corresponding overseas application.  The specifics of how this additional fee would be implemented are still to be decided.

  • File applications and request examination before April 15, 2013, to avoid this potential additional expense.
  • Finally, future granted patents will still be litigated under the current patentability and specification requirements if the application was filed and examination was requested before April 15, 2013.

Topics:  Convention Application, Divisional Applications, Intellectual Property Laws Amendment Act, Patents, Provisional Applications, Request for Examination

Published In: Intellectual Property Updates, International Trade Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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