Australia Moves to “Raise the Bar” on Patentability

Thursday 7th June 2012

Executive summary

The Australian Patents Act 1990 has recently been amended. The amendments have the effect of increasing the threshold for inventive step, the standard of disclosure required, and the usefulness of the invention claimed. New provisions exempting infringement for acts done for experimental purposes, or for the purposes of gaining regulatory approval, are already in force. The remainder come into force on 15 April 2013. The new provisions will apply to applications for which a Request for Examination has not been filed prior to the date of their coming into effect. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Act”) received Royal Assent on 15 April 2012. The Act contains amendments to all of Australia’s principal IP related legislation, but the purpose of this document is to comment on the amendments to the Patents Act 1990.

The purpose of the Act

The amendments to the Patents Act are intended to address concerns that the threshold for granting patents in Australia is too low, and that patentees are not required to disclose enough information about their invention. The Act addresses four key areas of patentability:

1. It removes restrictions on the information which can be considered when assessing whether the subject matter of a patent application is sufficiently inventive to justify the granting of a patent.
2. It increases the threshold for determining whether the patented invention is sufficiently useful to be the subject of a patent.
3. It raises the standard of disclosure of the invention necessary in the patent specification.
4. It adds to the grounds which the Commissioner of Patents can consider when deciding whether to grant or revoke a patent, and makes the standard of proof required consistent across all grounds.

What are the most important changes?

The Act contains over 50 changes to the Patents Act 1990. Some of the more important changes are summarised below.

1. Introduction of a new exemption to infringement for acts done solely for “experimental purposes”.
2. Introduction of a new exemption to infringement for acts done solely for gaining “regulatory approval” in Australia or elsewhere. This new section does not apply to “pharmaceutical patents”, as defined in the Patents Act 1990.
3. Applying the “balance of probabilities” standard across all grounds examined. This also applies to opposition and re-examination.
4. Inventive step is now assessed against the common general knowledge anywhere in the world.
5. Removal of the requirement that inventive step arguments be based on “information that a skilled person…could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant”. Any publicly available information is now potentially relevant.
6. Addition of a requirement that the patent specification disclose a “specific, substantial and credible use” for the invention claimed.
7. The options for amending the specification of a pending application have been reduced. The new provisions will prevent amendment of the specification by addition of material that the skilled person could not have directly derived by reading the specification as filed.
8. Increasing the level of disclosure required of the specification of an application (and a priority document) from providing “fair basis” for a claim, to providing “support” for the claim across its full scope.
9. Changes to divisional practice, including allowing for regulations which will limit the time for filing a divisional application to three months after acceptance of the application is published, regardless of whether the application has been opposed.
10. Addition of a provision confirming that a patent is not invalid merely because it was granted to the wrong person.

When do the changes come into force?

Most of the provisions of the Act will take effect from 15 April 2013, although the new “experimental use” and “regulatory approval” exceptions to patent infringement came into immediate effect with the passing of the legislation.

The critical event for determining whether most of the new provisions will apply to an application is the filing of a Request for Examination. In general the new provisions will not apply to applications for which a Request for Examination has been filed prior to the day the provisions come into force.

What action should I take?

To avoid an application being held to the more rigorous standards implemented by the Act, you should ensure that any planned Australian applications are filed in Australia, and that a Request for Examination is filed, before 15 April 2013. This may mean filing PCT national phase applications before the 31 month deadline (in some cases many months before), or even filing some cases as Paris Convention applications rather than via the PCT national phase.

You should also ensure that any planned divisional applications are filed (and a Request for Examination filed) before that date, and that Requests for Examination are filed on all currently pending applications before 15 April 2013.

We expect that there will be a large increase in the filing of Requests for Examination in the upcoming months, particularly as the 15 April 2013 deadline draws nearer. This temporary “blip” in examination requests may lead to increases in the delay before a first examination report issues (which can already be 18 months or more after the Request for Examination is filed). If you want to avoid this extra delay then we recommend that you file a Request for Examination as soon as possible.

The main points to consider when preparing patent specifications for filing in Australia are the new requirement to disclose a specific, substantial and credible use for the invention claimed, and the requirement that the specification provide “support” for the invention across the entire breadth of the claims.

The Act contains a number of other changes not mentioned above. Please let us know if you require any further information on these, or any other aspect of Australian intellectual property law.

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