Australia’s ‘Raising the Bar’–What This Means for Patent Applicants

We recently reported passage of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 through the Australian Senate (see Major Australian Patent Reform Passes in Senate).  On 28 February 2012 the Bill was introduced into the House of Representatives, where it is expected to pass quickly without amendment, in view of the substantial consultation that has already been conducted over the past three years.

The Bill is therefore likely to be passed into law within the next month or two, which means that it is time for all stakeholders to start thinking about the impact the changes in the law may have, and what this may mean for their business activities and patenting strategies.

There are many reforms in this Bill, but the ones which will have the greatest effect on users of the Australian IP system are those aimed at raising the standards required of a valid Australian patent.  It will be some time before we know exactly how far the bar has been raised, because it is likely to be a few years before any court decides a case involving a patent granted under the amended law.  However, there is no question that the reforms will make it more difficult to obtain a valid patent in Australia.

WHICH STANDARDS WILL BE RAISED?

The major aspects of patentability for which higher standards will apply are:

1. inventive step – with far greater scope to consider and combine items of prior art information in assessing whether an invention is obvious;
2. enablement – requiring a disclosure which enables a skilled person to perform the invention across substantially the full scope of the claims, as compared to the current situation in which it is enough to describe a single embodiment falling somewhere within the claims;
3. support – abolishing the current loose requirement that the claims be ‘fairly based’ on the description, and adding a European-style requirement that there be basis in the description for the subject-matter of every claim, and that the scope of the claims must not be broader than is justified by the extent of the description and drawings and the contribution made by the invention;
4. utility – adding an express requirement that the specification disclose (to the skilled person) a specific, substantial and credible use for the claimed invention, based upon the corresponding aspect of US patent law; and
5. provisional applications – will be required to meet the same enablement standard as a complete (nonprovisional) patent application.

WHEN WILL THE BAR GO UP?

The relevant provisions of the Bill relating to the enhanced standards of patentability go into effect 12 months after they are signed into law by the Governor General.  So if this were to happen, say, on 1 April 2012, the new standards will apply from 1 April 2013.

You might therefore think that all applications filed prior to this future commencement date will be subject to the current lower standards.

However, you would be wrong.  There are a number of instances in which an application filed prior to the commencement date – including many applications already filed – could be examined subject to the higher standards.  Mostly this has to do with the fact that the Australian law allows an applicant some leeway to determine when examination of an application occurs.  A request for examination (and the required fee) can be delayed until the earlier of:

1. five years after filing the application; or
2. six months after the Patent Office directs the applicant to request examination.

In most cases, the second of these two dates is the relevant one, because the Patent Office is currently sending out directions to request examination at around four years after the priority date (a table of the most recent directions issued by technology area is available on the IP Australia web site).

The new standards will apply not only to applications filed after the commencement date, but also to applications filed before commencement, in various circumstances in which examination is not yet underway.  This will include all new applications, and:

1. existing standard patent applications where a request for examination has not yet been filed when the amendments commence;
2. innovation patent applications filed before commencement, but which are not granted until after commencement, even if a request for examination is filed with the application; and
3. innovation patents granted before commencement, but for which the patentee (or another party) has not yet requested examination and certification when the amendments commence.

ACTION POINTS

There are a number of scenarios in which applicants for patents in Australia may wish to take specific steps to ensure that their claims are examined, and patents granted, under the current, lower, standards.

New Applications

Higher standards will apply to any new application filed after commencement of the amendments.  Applicants who have a choice, e.g. filing applications claiming priority from a provisional or foreign application filed less than 12 months prior to commencement, may wish to consider filing early in Australia, and requesting examination at filing.

Existing Applications

Applicants of Australian applications that are still pending when the amendments commence, may wish to ensure that they voluntarily request examination prior to commencement, if not already directed to do so by the Patent Office.  Otherwise the higher standards will apply.

This could be of particular importance to local Australian applicants who may have taken advice from a patent attorney, and had an application prepared, under the assumption that the current law would apply.

It is likely to be of less concern to applicants who are also applying for patents in major overseas jurisdictions, including the US and Europe, since the standards there are already higher, and an application targeting foreign requirements should also satisfy the raised Australian standards.

Nonetheless, we can think of no good reason why someone would wish to obtain a patent subject to a higher patentability bar – and thus more vulnerable to invalidation – when they could obtain the same, or broader, claims subject to a lower bar.  Bear in mind (especially if you are reading this from the US) that Australian patents do not enjoy a presumption of validity.

PCT Applicants

An international application filed under the Patent Cooperation Treaty (PCT), which subsequently proceeds as an Australian national application, is treated as if filed in Australia on its international filing date.  However, in normal circumstances, it will not enter the national phase in Australia until at least 18 months later.  And until it has actually been filed in Australia, it is not possible to request examination.

Thus any applicants with PCT applications pending at the time the new provisions commence may wish to consider an early entry into the Australian national phase, along with a request for examination at filing.

For new applications filed prior to commencement, parallel filings in Australia (with examination request) and under the PCT are another option.

Innovation Patents

Perhaps the most contentious aspect of the transition relates to innovation patents.

An innovation patent is granted rapidly and without any substantive examination.  It has a maximum term of eight years, but is not enforceable unless it has been examined and certified.  Certification can be requested at any time during the life of the patent.  There is no obligation to have an innovation patent certified at all, if there is never any need to enforce it.

The whole point of this regime was to reduce the cost of obtaining patent rights on lower-level innovations.  The applicant for an innovation patent does not commit themselves to the inexorable march of examination and grant deadlines – and associated expenses – which they would face after filing a standard patent application.

And since innovation patents are specific to the Australian system, and applicants often particularly cost-sensitive, it is likely that many were originally prepared to meet the prevailing Australian requirements of, e.g., fair basis and enablement, rather than some higher standard.

The owners of such innovation patents will need to request certification prior to commencement of the Raising the Bar amendments, or risk a loss or reduction of the scope of rights to which they would be entitled under the current law.

Provisional Applications

While the new standards for provisional applications also do not commence until one year after the amendments are signed into law, complete applications filed after the commencement date, even if priority is claimed from a provisional filed before commencement, will be subject to the higher standards.

Applicants may therefore wish to consider filing their subsequent complete applications early, and requesting examination at filing, as for any other new application.

FURTHER IMPACT ON IP AUSTRALIA AND APPLICANTS

We are not giving away any great secrets here.  All Australian patent attorneys will be providing advice of this nature to their clients over the coming months.

IP Australia should therefore be anticipating a rush on requests for examination leading up to commencement of the amendments.  In order to deal with this, it is possible that the Office will slow the rate at which it issues directions to request examination, since it will not need to compel applicants when its examiners already have plenty of work to do!

Even so, it is possible that the spike in examination requests will significantly exceed IP Australia’s capacity.  Directions are currently issuing on applications having priority dates in 2007 and 2008, i.e. four or five years ago.  There are thus potentially tens of thousands of applications for which voluntary examination requests may be filed over the next 12-14 months!

Experience suggests that mean of these will be filed at, or close to, the last moment.  So applicants who do not wish to join a very long queue may wish to file examination requests sooner, rather than later.  You will not only be doing yourself a favour, but IP Australia will probably appreciate it also, since it may at least spread out the demand!

It will be interesting to see how all this pans out.

Tags: Australia, Law reform, Legislation, Patent law, Raising the Bar