23 February 2013

4 Tips for the Coming Australian Patent Law Reforms

Four balloonsRegular readers of this blog will be aware that it was almost a year ago now that the Intellectual Property Amendment (Raising the Bar) Act 2012 was signed into law.  All Patentology articles relating to the patent law reforms in the Act are marked with the tag ‘Raising the bar’.

The majority of changes in the law – which will generally raise standards so that patents will be harder to obtain and defend than is currently the case – come into effect on Monday, 15 April 2013.  As a result, Friday, 12 April 2013 will be the final day on which to act if you have an application which you wish to be examined and granted under the existing law.

Here, therefore, are four things you may wish to consider in the final weeks leading up to the big changes.

Filing Applications

Do you have an invention which is ready for patenting, but no application has yet been filed?  Or perhaps you have an existing application, such as a foreign patent application or an Australian provisional application, filed within the past 12 months which could therefore form the basis for priority in a new Australian standard application.  Alternatively, you may have an international application pending which has yet to enter the national phase in Australia.  Or you might be considering filing a divisional application based on an existing Australian standard patent application.

In any of these cases, if you wish the new application, and any resulting patent, to be subject to the existing laws rather than the new, higher standards, you will need to make sure that the necessary steps are taken for filing in Australia no later than 12 April 2013.  All applications filed after this date will be subject to the new laws.

Requesting Examination

However, it will not be enough just to get you new applications filed before the reforms come into effect.  As in a number of other countries, such as Canada, China and Japan, Australia employs an examination request system, according to which the official review of an application does not begin until the applicant files a request and pays the examination fee.

According to the transitional provisions in the Raising the Bar Act, the new laws will apply to any application/patent for which the request for examination is filed on or after 15 April 2013.

So if you have a pending application – including a new application – that you wish to be subject to the existing laws, you will need to make sure that an examination request is filed, and the fee paid, no later than 12 April 2013.

Many applicants are already aware of this requirement, and patent attorneys across Australia have been recommending that examination be requested under the current law where possible.  As a result, the rate of examination requests being filed is currently very much higher than normal, which will cause a huge examination backlog in the Patent Office.  Requesting examination sooner rather than later will give your application an earlier position in the queue!

Have Entitlement Details On-Hand

Australian law does not require formal assignment documentation to be filed, as proof that the named applicant has properly acquired ownership of the invention from the original inventors and/or any intermediate owners.

However, before any application can be accepted for grant, it is necessary for the applicant (or, more commonly, their agent) to file a statement confirming the basis upon which ownership of the invention has been derived from the original inventors, along with the right to claim the benefit of any earlier-filed priority applications.

In the past, this statement could be filed at any time prior to acceptance.  Last year, IP Australia introduced a new online portal which required that the entitlement details be specified at filing of a new application, although to date it has been possible to file without this information, if unavailable, by other means (e.g. by mail or facsimile) – bearing in mind that this attracts a higher filing fee.

According to a recent announcement from IP Australia, as of 2 March 2013 entitlement details will no longer be required at filing, however they will be required in order to file a request for examination via the online portal.  However, up until 12 April 2013 it will be possible to file an examination request without entitlement details via ‘traditional’ means.

From 15 April 2013 it will be compulsory to provide entitlement information when requesting examination, whether online or via a conventional form.

Amendments

A more subtle issue relates to amendments.

Under the current law, amendments to a patent specification are permissible so long as they do not result in any new subject matter being claimed.  This means that it is generally possible to make any desired amendments to the description or drawings, so long as any additions are not claimed, and do not result in any expansion or shift in the scope of the claims.

In one example that recently arose in the office where I work, a question arose as to whether it would be possible to replace some illegible drawings pages in an application.  Under the current law this will typically be acceptable.  A properly drafted description covers all of the significant features shown in the drawings, which thus serve the purpose of aiding understanding, rather than providing the sole source of disclosure of elements of the invention.

However, the amended law will bar any amendment which extends the scope of the disclosure, even if it has no impact on the claims.  In many cases, replacing drawings in which some features (however incidental or well-known) are illegible with versions in which they are clear is likely to be impermissible under the new law.  Other amendments which are currently allowable, but which may be rejected under the revised law, include the addition of further examples, e.g. to a specification describing a chemical or pharmaceutical invention, even if these do not alter the scope of the claims.

There are two ways to ensure that allowability of amendments is evaluated under the current provisions, rather than the updated ones:
  1. if examination is requested by 12 April 2013, then the existing law in relation to amendments will continue to apply throughout the life of the application/patent;
  2. if a formal request to amend is made, along with payment of the fee, by 12 April 2013, then that specific request will still be subject to the existing laws, even if examination has not yet been requested, and/or the amendment request is not approved until on or after 15 April 2013.

Conclusion

The bottom line is that applications must be filed (if they are not already pending), and examination must be requested, no later than 12 April 2013 if the existing law is to apply to them.

From 15 April 2013 new, higher, standards will apply to all applications for which these steps have not yet been completed.

However. for most applicants missing these deadlines will not be fatal.  The problem with the Australian patent law is the disturbingly low standards which currently apply.  The Raising the Bar seek only to lift the Australian patentability requirements up to around the same level as our major trading partners, such as the US, Europe, China and Japan.  Since many applications have been prepared in view of those standards anyway, they can be expected to fare no worse in Australia than elsewhere.

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