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.
It is proposed that this requirement be removed – a move with which we wholeheartedly agree!
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.
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.
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.
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.
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.
- provision for preliminary search and opinion;
- examination of utility;
- permitting examiners to consider evidence of ‘prior use’;
- lowering the barrier to refusal of an application; and
- changes to amendment provisions.
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:
- new provisions for regulation of the patent attorney profession, including allowing for incorporation of patent attorney businesses;
- changes to enable patent oppositions to proceed more expeditiously;
- new restrictions on the filing of divisional applications, to prevent applicant abuses of the system that contribute to public uncertainty;
- an extension to the client-attorney privilege intended to align the patent attorney privilege with the privilege as between lawyers and their clients; and
- numerous further reforms to the trade marks, registered designs, and copyright laws.
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.