Changes to Australian Patent Laws Effective April 15, 2013

by Winthrop & Weinstine, P.A.

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.

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.

© Winthrop & Weinstine, P.A. | Attorney Advertising

Written by:

Winthrop & Weinstine, P.A.

Winthrop & Weinstine, P.A. on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.