[authors: Craig Humphris & David McCarthy]
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.
The key amendments made by the Raising the Bar Act are as follows:
Schedule 1 – Raising the quality of granted patents
Currently, only common general knowledge from Australia is taken into account in determining what is common general knowledge for the purposes of assessing inventive step. Under the Raising the Bar Act, common general knowledge from overseas (that is, without a territorial limitation) can also be taken into account and this will permit the use of foreign experts who have given evidence in overseas proceedings.
Previously, only information 'ascertained, understood and regarded as relevant' was considered in a review of prior art for the assessment of inventive step. Under the Raising the Bar Act, all information in existence in Australia or overseas can be considered prior art, provided it is capable of being understood and regarded as relevant. This should increase the volume of prior art taken into account when assessing inventive step.
The level of disclosure required for provisional applications will be increased and will require a similar level of disclosure required for complete specifications, although provisional applications need not disclose the best method of performance of the invention.
Complete applications will have their disclosure requirements changed. The law will be amended to conform substantially to the corresponding United Kingdom provision and the new provision states that the complete specification must "disclose the invention in a manner which is clear enough and complete enough for an invention to be performed by a person skilled in the relevant art". The explanatory memorandum to the Raising the Bar Act, indicates that the subject matter of a claim should be enabled across its "whole width".
Australia's requirement that a claim needs to be 'fairly based' on matter disclosed in the specification will be replaced with a 'supported by' requirement.
Under the new law, there must be basis in the description for each claim. Further, the scope of the claims must not be broader than is justified by the extent of the description, drawings, and contribution to the art. This second aspect of the support requirement appears to be intended to provide a means for rejecting unduly speculative claims.
Currently, it appears settled by the Australian High Court (the supreme court in Australia's court hierarchy) following its decision in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274, that there is no link between claim scope and technical contribution in the art. The Raising the Bar Act attempts to change this and seeks to import a link between these two elements.
The Raising the Bar Act introduces a new provision which will require a complete specification to disclose a "specific, substantial and credible use" for the invention. This provision was based substantially on the corresponding US section. This requirement for a specification to disclose a use for the invention is additional to the requirement for the invention itself to be useful, in the sense of meeting the promise of the invention as described in the specification.
Under the new system, patent examiners will be able to consider utility and prior use at the examination stage. These grounds are not available to examiners under the current system.
The standard of proof to be applied by an examiner for all examination tests will be raised to the civil standard (balance of probabilities). Currently, an Examiner is required to accept a patent application 'unless it appears practically certain' or 'clear' that the patent would be invalid. Under the new laws, the Examiner will need to be satisfied on the balance of probabilities that a patent would be valid. These changes will shift more burden on the applicant to show patentability.
Australia's ex parte re-examination procedure before the patent office (IP Australia) will be modified. Currently, re-examination only considers the grounds of novelty and inventive step. However, from 15 April 2013, re-examination will be extended to include the grounds of best method, clarity, fair basis, manner of manufacture, and utility.
The amendment provisions will be modified to prevent applicants from adding subject matter to their applications, except when the amendment is to correct an obvious mistake or clerical error. Whether subject matter has been added is made with reference to the complete specification as filed, as well as "other prescribed documents (if any)".
Schedule 2 – Free access to patented inventions for regulatory approvals and research
Under the current system, exemption from patent infringement is allowed for use of a patented invention solely connected with generating information for submission to a drug regulation authority for seeking regulatory approval of a pharmaceutical.
From 15 April 2013, exemptions from patent infringement will be broadened beyond pharmaceutical products and will be provided for use solely connected with generating information for seeking regulatory approval for any product. These changes will be most relevant to certain medical device products and agricultural products that require regulatory approval before market launch.
Experimental use exemption
Australia has now codified an experimental use exemption to patent infringement.
The provision was made effective on 15 April 2012 and applies to acts done for experimental purposes relating to the subject matter of the invention, including:
• Determining the properties of an invention;
• Determining the scope of a claim relating to the invention;
• Improving or modifying the invention;
• Determining the validity of a patent or of a claim relating to the invention; or
• Determining whether the patent would be/has been infringed by the doing of an act.
Schedule 3 – Reducing delays in resolution of patent applications
Other significant amendments introduced by the Raising the Bar Act, include changes to practice on divisional applications (Australian divisional applications are often seen as equivalent to U.S. continuation applications).
(1) Under the current system, it is possible to file divisional applications from applications under opposition (Australia has a post acceptance, pre-grant, third party opposition procedure). The practice of filing divisionals from applications under opposition is a useful tactic by patent applicants who want to maintain a live application in case the parent application is successfully opposed or substantially narrowed. From 15 April 2013, it will no longer be possible to file divisional applications from applications under opposition or at the end of the opposition period (3 months from advertisement of acceptance).
Furthermore, under the current system, it is possible to withdraw an opposed application at any time and pursue a divisional application. The applicant can also wait to see the evidence from the opponent before making a decision to pursue this option and withdraw. However, under the new system, patent applicants will require the Commissioner's consent to withdraw an opposed application and consent is likely to be withheld if all other divisional applications are removed.
(2) From 15 April 2013, it will also no longer be possible to convert an application to a divisional or innovation patent off an earlier filed application, e.g., to overcome novelty or inventive step rejections from own application.
Under the current system, where a novelty objection is raised against an applicant's invention citing their own earlier application, the applicant could overcome the objection by converting the later application to make it a divisional of the earlier application. The Raising the Bar Act will close this option.
Mr. Humphris is a Senior Associate with Wrays and team leader of Wrays' Adelaide office. Dr. McCarthy is an Associate with Wrays.