Raising the bar on the patent system in Australia

The Australian Government has released, for public viewing and comment, the Intellectual Property Laws Amendment (Raising The Bar) Bill 2011 (“the Bill“), which proposes to make a number of significant amendments to the Patents Act 1990 (“the Act“) (as well as the Trade Marks Act 1995, Designs Act 2003 and Plant Breeders Rights Act 1994).  Amendments to the Act (“the Amendments“) are intended to encourage innovation by supporting investment in research and technology, and to promote the exploitation of inventions.

A copy of the Bill can be obtained here and a copy of the explanatory memorandum here.

The proposed Amendments will:

• increase the threshold test of inventiveness by removing the requirement that the common general knowledge taken into account when assessing inventive step be limited to the patent area (ie Australia).  This will also permit experts who have given evidence in overseas proceedings to be used in Australian proceedings;
• remove the requirement that section 7(3) information to be taken into account when assessing inventive step, be “ascertained, understood and regarded as relevant” by the person skilled in the art;
• replace the requirement that an invention must be “useful” with a requirement that a specification disclose a “specific, substantial and credible” use for the claimed invention;
• impose a requirement that a patent specification disclose the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the relevant art (the requirement that a complete specification include the ‘best method’ of performing the invention will remain);
• amend the current requirement that a provisional application simply describe the invention to require that a provisional specification disclose the invention in a manner which is clear and sufficiently complete to enable a person skilled in the art to perform the invention (in line with the requirements for a standard patent application);
• replace the current “fair basis” test with a requirement that the claimed invention be “supported”, such that the patentee must provide adequate directions of how to put the invention into practice.  This important amendment is designed to ensure that monopolies are no broader that the public disclosure;
• require the examiner to consider utility and prior use at the examination stage;
• raise the standard of proof to be applied by an examiner for all examination tests to the civil standard (balance of probabilities);
• permit re‑examination on any ground of invalidity, rather than just novelty and obviousness;
• expand the exemption to patent infringement for activities undertaken for the sole purpose of obtaining regulatory approval to non-pharmaceutical products;
• exempt experimental activities (tests, trials and procedures that a researcher or follow-on innovator undertakes as part of discovering new information or testing a principle or supposition) from patent infringement. To provide certainty and clarity for researchers, a non-exhaustive list of activities that are deemed to be experimental has been included in the proposal;
• permit a company to register as a patent attorney;
• extend client-patent attorney communications the same privilege which currently attaches to client-lawyer communications;
• expand the definition of ‘patent attorney’ to include foreign registered patent attorneys;
• amend the grace period to include secret use by stipulating that use of an invention in Australia within the prescribed period is not secret use;
• prevent a patent being deemed invalid merely because the patent was granted to a person who was not entitled to it.  The Bill also sets out more efficient mechanisms to amend ownership details on the Register;
• provide that omnibus claims must only be used where the invention can only be defined by reference to a specific description or drawing in the specification; and
• simplify the method for sealing a patent, such that entry onto the Register will be deemed sealing.

Comments on the Bill are currently being sought by IP Australia. The deadline is 4 April 2011, however, we understand that IP Australia has requested any comments be provided as soon as possible.