Higher Standards for Australia: Raising the Bar Legislation

New Legislation

Some of the most significant changes to Australian patent law came into effect on 15 April 2013 (as a result of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012). The aim of the legislation is to encourage investment in technology by raising intellectual property standards. The most significant changes relate to patents.

Tougher Inventiveness Standards

Inventive step is one of the requirements for an invention covered by a patent. The new legislation broadens the basis against which inventive step is assessed potentially making a patent harder to obtain.

More Detail in Provisional and Complete Patent Applications

Greater detail describing the invention in a provisional patent specification is required. This is an important change compared to the former requirement that the provisional specification "describe the invention". The new provisions require that the invention must be disclosed "in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art".

The same requirements for the description of an invention apply to a complete patent specification. Effectively the only difference between the description requirements for a provisional specification and a complete specification is that the complete specification must describe the best mode of performing an invention. Best mode was already a requirement for complete specifications.

Another change is that the claims of a complete specification must be supported by matter disclosed in the specification. This is aimed at preventing speculative claims from being granted in a patent. The new support requirement is also relevant to assessment of priority dates claimed from Australian provisional applications and overseas basic applications.

There is an extra utility (i.e. usefulness) requirement. The former rules only required the invention to be useful to be patentable. The new legislation provides that "a specific, substantial and credible use" for the invention be disclosed in the complete specification

More Restrictive Amendments to Patent Specifications

The former relatively generous provisions for amendment which for instance allowed for addition of further Examples to the specification are now restricted. Only corrections of obvious mistakes and clerical errors are allowed under the new rules.

Changes to Examination

Utility and prior use of the invention are now examined under the new legislation and modified examination has been scrapped.

There is also a shortened time frame for requesting examination when directed to do so by IP Australia and reduced time for gaining acceptance of the application. There is only 2 months to request examination, when directed to do so instead of the former 6 months and only 12 months to obtain acceptance of the application rather than the 21 months previously allowed.

Grace Period

The 12 month grace period for disclosure now includes commercial use such as sale and offer for sale of an invention. The changes amend the definition of "secret use". Secret use of an invention is a ground for invalidity of a patent and previously included secretly offering the invention for sale or license prior to filing a patent application. The definition of secret use has now been clarified to exclude any use of the invention in the 12 month period prior to filing a complete application. As a result of the changes publication of an invention by an inventor or patent applicant, or any other use of the invention such as sale and offer for sale or offer to license may be disregarded if a complete patent application is filed within 12 months of the disclosure.

Other Changes

Exemptions to patent infringement for gaining pharmaceutical regulatory approval and experimental use of inventions have come into effect, and restrictions on filing divisional patent applications have also been implemented.

Broadening of client privilege for patent and trade marks attorneys, changes to trade mark opposition procedure, customs seizures and punitive damages for trade mark infringement have also come into effect.

© Julie Harkins 2013/2015