03 April 2011

Australian Patent Reform – Wrap-Up

In eight prior articles, we have reviewed some of the major changes to Australian patent law and practice that are being proposed by IP Australia in the Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.

The exposure draft was released for public review and comment on 3 March 2011 (see IP Australia's Exposure Draft Exposed!), and written submissions were invited by a deadline of 4 April 2011.  Considering the complex and extensive nature of the proposed changes, one month is not a very long period of time, and it has taken us this long to review just the most significant of the proposed patent reforms. 

The purpose of this article is therefore to provide a brief summary of the proposed reforms covered in the earlier articles, ahead of the deadline for written submissions.

I. Raising the Inventive Step 

The standard of inventiveness required under the current Australian patent law is woefully low, the main reason for which is the requirement to show that the relevant skilled person would have ‘ascertained, understood and regarded as relevant’ an item of prior art information before it can be considered as a starting point for the inventive step analysis.

It is proposed that this requirement be removed – a move with which we wholeheartedly agree!

II. Usefulness

Currently, an invention will fail to be ‘useful’ if it does not work, or if it fails to deliver on the promises made in the patent specification.  This is a relatively low standard of utility, which does not necessarily capture cases of ‘speculative claiming’, for example where one or more generic or prospective applications of an ‘invention’ are proposed.  A common, and controversial, example of this kind of claiming has arisen in relation to isolated genetic materials.

The reformed utility requirement would require a specific, substantial and credible use for the invention to be disclosed in the specification.  Notwithstanding some relatively minor concerns about the proposed wording of the amendments, we consider this also to be a good reform.

III. Provisional Specifications

The Australian Patents Act 1990 currently requires that a provisional specification ‘describe the invention’, which is a lower level of disclosure than is required for a complete specification.  The problem is that this lower level of disclosure may be insufficient to support a priority claim in a foreign application.  In fact, some Australian case law suggests that it may be insufficient even to support a priority claim in Australia!  IP Australia is therefore proposing that the Act be amended to require an enabling disclosure in a provisional specification.

Our view is that this proposed amendment misses the mark.  We do not understand why the Act even includes a provision for the level of disclosure required in a provisional specification.  Since provisional applications are not examined, there is no circumstance in which such a provision may practically be applied.  The ‘priority claim’ issue is covered elsewhere in the Act and Regulations, and on the face of it does not make any distinction between an Australia provisional application, and any other type of priority document.

IV. Enablement

The standard of ‘enablement’ currently required under the Australian patent law is also very low.  In particular, it is sufficient for the specification to enable just one embodiment falling within the scope of the claims, regardless of their breadth!

IP Australia is therefore proposing that more extensive enablement be required, across the full scope of the claims, as in major foreign jurisdictions.  We agree with this proposal, but we do not like the amendment proposed in the draft Bill, which is based on the UK/European law.  We would prefer to see a clear statement in the Act of what is required, rather than relying on foreign case law as an aid to interpretation of Australian law.

V. Support

The Australian patent law currently requires that each claim be ‘fairly based’ on the matter disclosed in the specification.  According to High Court authority, this is yet another low threshold which requires only that the scope of the claims be consistent with ‘what the body of the specification read as a whole discloses as the invention’.

IP Australia proposes – again – to import UK/European law through the replacement of ‘fair basis’ with a support requirement.  We are unconvinced that this is a good idea, especially considering that the proper roles of ‘enablement’, ‘support’ and ‘inventive step’ seem to overlap, and are therefore potentially confusing to users of the patent system.  We cannot help wondering whether, with the proposed enhancements to enablement and inventive step, the existing ‘fair basis’ requirement might be adequate.

VI. ‘Experimental’ and ‘Regulatory’ Exemptions to Infringement

The Draft Bill proposes two new exemptions from infringement of a patent.  The first is intended to extend the existing regulatory approval exemption to encompass otherwise infringing acts relating to obtaining government approval for goods (or, presumably, services) other than pharmaceutical products (which are already covered under the current law).

The second new exemption is an ‘experimental’ or ‘research’ use provision, based upon a corresponding provision in the UK Patents Act 1977.

We are in favour of both of these exemptions, in principle.  We are, however, a little concerned that the experimental use provision could be construed more narrowly than intended although, by the same token, we do not expect that it would often be invoked in a legitimate case.

VII. ‘Search to Sealing, and Beyond…’

In addition to the various reforms to the substantive requirements for validity of a patent, IP Australia is proposing a number of changes to improve the standard and effectiveness of examination, and related procedural matters.  These include:

  1. provision for preliminary search and opinion;
  2. examination of utility;
  3. permitting examiners to consider evidence of ‘prior use’;
  4. lowering the barrier to refusal of an application; and
  5. changes to amendment provisions.
Generally speaking, we agree with these reforms.  However, we would like to see some quid pro quo for patentees, in terms of some level of presumption of validity for claims that have passed the more stringent examination processes.

VIII. Transition

IP Australia is currently proposing that the changes to substantive requirements for validity would not only to all applications filed after commencement of the amendments, but also to applications that have already been filed but for which no examination report has been issued by the date of commencement.

We have given this proposal a huge red thumbs-down!  Applicants and their advisers absolutely must have certainty regarding the laws that will apply to an application at the time of filing, and indeed for the purpose of informed decision-making prior to filing.  It is therefore completely unacceptable for the applicable law to be determined by an event that is not wholly within the control of the applicant, i.e. the date on which an examiner eventually picks up the application and issues an examination report.

If you are a stakeholder in the Australian patent system, and you send IP Australia a comment on only one aspect of the proposed reforms, make it this one!

Other Proposed Reforms…

As noted above, we have not had time to review all of the proposed reforms, even within the confines of those relating to patents alone.  In addition to the areas that we have covered, the draft Bill includes:

  1. new provisions for regulation of the patent attorney profession, including allowing for incorporation of patent attorney businesses;
  2. changes to enable patent oppositions to proceed more expeditiously;
  3. new restrictions on the filing of divisional applications, to prevent applicant abuses of the system that contribute to public uncertainty;
  4. an extension to the client-attorney privilege intended to align the patent attorney privilege with the privilege as between lawyers and their clients; and
  5. numerous further reforms to the trade marks, registered designs, and copyright laws.
These further reforms are either relatively uncontroversial, of more-limited interest, or outside the general areas of interest to Patentology.

We hope that you have found the topics that we have been able to review of some interest.  We will continue to monitor, and report on, further developments in the reform program.

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