“Raising the Bar” – Australia’s new intellectual property legislation at a glance

Wednesday 21st March 2012

The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 has recently been passed by the Australian Senate and the House of Representatives[1].  It is expected that the resulting Act will receive Royal Assent in the near future.  There is then a fixed 12 month period before most of the Act’s provisions come into force.  It is therefore likely that the majority of the new legislation will take effect at the end of March or early April 2013.

Most of the Bill’s proposed amendments relate to the Patents Act.  The main changes include:

Grace period

The existing Act provides some circumstances in which publication or use does not affect the validity of a later filed application.  However, under the present provisions, secret use of an invention before filing can invalidate a patent.  That is, a grace period is available after public use of the invention, but not after secret use.  The Bill specifies that any use of an invention within Australia is not secret use and thus extends the availability of the grace period. 

Inventive step

The Bill replaces the current assessment of inventive step in light of the common general knowledge in Australia with an assessment based on the common general knowledge in the art.  That is, inventive step will be assessed with regard to global common general knowledge.

Utility

Lack of utility is not currently a ground for objection during examination.  However, under the Bill, utility will be examined and a lack of utility will be an available ground of refusal.

Fair basis / support

The current Act requires that claim(s) “must be clear and succinct and fairly based on the matter described in the specification”.  The Bill replaces the “fair basis” language with a requirement that claim(s) are “supported by matter disclosed in the specification”.  “Support” means that “there must be a basis in the description for each claim; and 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 seems to require a higher standard of disclosure (i.e. more comprehensive) than under the present law. 

Divisional applications

The deadline for filing divisional application(s) will be three months from the date of advertisement of acceptance. 

Modified examination

Modified examination based on a corresponding granted patent from another recognised jurisdiction will no longer be available.

Regulatory review and experimental use exceptions

The existing regulatory review exception will be extended to non-pharmaceutical goods (e.g. agricultural and veterinary compounds) for which government approval is required.

The Bill also introduces a specific statutory experimental use provision.  This provision means that an act done for experimental purposes is not an infringing act.  “Experimental purposes” are defined as including acts such as determining the properties of the invention, improving or modifying it or determining the validity of the patent.

Effect of the Act

The regulatory review and experimental use exceptions described above will take effect the day after the Act receives Royal Assent. 

Other provisions of the Act will come into effect 12 months after Royal Assent.  This means that if examination of a patent application is requested in the 12 month period after assent, the application will be subject to the lower examination standards of the existing Act.


[1] Further information about the Bill, including the text and Explanatory Memorandum is available at http://www.aph.gov.au/Parliamentary_Business/Bills_Legislation/Bills_Search_Results/Result?bId=s837

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