19 April 2013

‘Raising the Bar’ Raises Patent Filings

Raising the barsAs many readers will be aware, the Australian Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came full effect on Monday, 15 April 2013.  A concise summary of the reforms, and a number of ‘fact sheets’, are available from the IP Australia web site.

As I wrote back in March last year, among other reforms, the new laws substantively raise patentability standards.  Significant changes include:

  1. enhanced disclosure requirements in the patent specification; 
  2. enhanced disclosure requirements in a priority document in order to obtain the benefit of an earlier filing; 
  3. replacement of the old ‘fair basis’ standard with a European-style ‘support’ standard;
  4. a new ‘utility’ standard; 
  5. removal of the geographical limitation on the ‘common general knowledge’ forming the background for inventive step and innovative step assessment; and
  6. removal of the requirement that prior art documents be ‘ascertained, understood and regarded as relevant’ by a person skilled in the art before they can be considered in an inventive step assessment.
All of this means that some claims which would have been patentable prior to 15 April 2013 might no longer be patentable under the new laws.

Under the savings and transitional provisions of the Raising the Bar Act, the former law continues to apply to any application and patent:
  1. which was filed prior to 15 April 2013; and
  2. for which a request for examination was made prior to 15 April 2013.
I predicted back in November last year that these transitional provisions would have a significant effect on applicant behaviour.  It is now possible to gain some insight into just how great that effect has been.  And it is pretty huge!

Filing Behaviour

The chart below shows the number of applications filed in Australia during each month since the Raising the Bar Act was signed into law last year.  Each bar in the chart represents a period ending on the 14th day of the month in question.  The data was obtained by using IP Australia’s AusPat online database to identify all direct applications having an Australian national filing date, and all PCT-originating applications entering the national phase in Australia, during each one-month period.
Raising the Bar - Filings
Aside from the December-January period (which includes IP Australia’s Christmas/New Year closedown) monthly filings were consistent with recent historical averages, at typically just over 2000 per month.  The majority of Australian filings typically arrive via the PCT route.

However, behaviour in the final month prior to the Raising the Bar reforms coming into effect is dramatically different.  Between 15 March 2013 and 14 April 2013 a total of 6300 applications were filed in Australia!  I am hoping that these are the final figures, however the numbers have increased over the course of this week as IP Australia has worked its way through processing the huge number of applications – 3254 – filed in the last week, including 217 filed electronically over the weekend. 

(As an aside, on behalf of all Australian patent attorneys, could I take this opportunity to remind our foreign clients that the time zone on the east coast of Australia is GMT+1000.  Thanks to all of you who realised that you would actually need to send your instructions on Thursday if they were going to reach us by our close of business on Friday!)

It is also notable that the proportion of direct national filings was much higher in the final month, being almost equal with PCT national phase filings.  This was bolstered significantly by 891 divisional applications, showing that many applicants with existing pending applications chose to hedge their bets by filing a further application that will continue to enjoy the benefits of the lower patentability standards.

Examination Requests

Unfortunately, AusPat does not provide an option to search for applications based on the date of filing of a request for examination, so exact figures for examination requests cannot easily be obtained.

However, I took a random sample of applications filed in the final month and confirmed that in all cases (unsurprisingly) a request for examination had been made at filing.  I also note that the experience of my employer, Watermark, was that a very high number of examination requests were filed in relation to already-pending applications, in the three months leading up to the commencement of the Raising the Bar reforms.

Impact on Patent Examination

In the absence of detailed statistics on examination requests, it is difficult to assess the impact of applicant behaviour on examination timelines.

However, I think it likely that the volume of examination requests and new applications leading up to 15 April 2013 will have added at least two-to-three years to IP Australia’s examination backlog.

The most recent update of IP Australia’s ‘response times’ statistics (in December 2012) indicated that the typical period from examination request to issue of a first examination report was 8-12 months.  It therefore seems likely that applicants who filed examination requests in the days leading up to the commencement of the Raising the Bar reforms can expect to wait at least three-to-four years before receiving an examination report.


Although the law changed forever – and undoubtedly for the better – on 15 April 2013, it appears that IP Australia will still be examining applications under the former provisions until at least 2016 and beyond.

Oppositions to grant will continue to be decided under the old laws until long after the last ‘pre-RtB’ application has been examined.

And, of course, the courts will still be dealing with disputes over patents granted under the old laws until at least 2033!

Over time, we will start to see the first trickle of applications being examined under the reformed laws, but it might well be years before the new standards of validity come before the Australian Federal Court. 

The new standards are highly relevant to those of us involved in advising inventors and applicants, and drafting and filing new applications.  However, in many respects the ‘brave new world’ is going to continue to look just like the old one for a long time to come.

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