Hindsight by Stealth? Pre-RtB ‘Ascertainment’ After Sandoz v Bayer

A recent Full Court decision suggests that demonstrating prior art could be ‘reasonably expected to be ascertained’ under the pre-Raising the Bar (RtB) law may be considerably easier than previously thought.  But has the pendulum swung too far?  In relaxing the evidentiary requirements for establishing that prior art information would have been found by the skilled person, the Full Court may have undermined a safeguard against hindsight analysis that was inherent in the prior law.

In Sandoz AG v Bayer Intellectual Property GmbH [2024] FCAFC 135, the Full Court has taken a markedly different approach to prior art ‘ascertainment’ than the primary judge (Rofe J in Sandoz AG v Bayer Intellectual Property GmbH [2023] FCA 1321).  While acknowledging that whether prior art ‘could be reasonably expected to have been ascertained’ is a question of fact, the Court has effectively lowered the bar for the evidence required to establish this factual foundation.  This raises a question of whether the practical difference between the old and new law is as great as previously assumed.

The primary judge took what might be called a ‘real world’ approach to ascertainment.  Her Honour wanted to see evidence of the complete search process that would have been undertaken by the skilled person, without knowledge of the target document.  This included evidence of searches across multiple databases using various relevant search terms, and – critically – how the skilled person would have identified the relevant document from among all the search results that would have been generated.

The Full Court rejected this approach as too demanding.  Instead, the Court held that once it is established that a document would have been found in a relevant database search, it is not to the point that additional searches might have been performed or that other documents might also have been found.

This might seem like a practical approach – after all, if a document exists in a database that would have been searched, using search terms that would have been used, isn't that enough to show it could have been found?  But this reasoning potentially introduces precisely the kind of hindsight analysis that the ‘ascertainment’ requirement was – arguably – meant to guard against.

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Tags: Australia, Obviousness, Prior art, Raising the Bar

Have Australia’s ‘Raising the Bar’ Law Reforms Suppressed Patent Oppositions?

Australia has a pre-grant patent opposition system.  That is to say, once an application has passed examination and been accepted for potential grant as a patent, there is a period (of three months) during which anybody may oppose the grant.  The subsequent opposition proceedings – if they run their full course – consist of a series of evidentiary stages, legal submissions, and an oral hearing, following which the hearing officer (a delegate of the Commissioner of Patents) issues a written decision on the outcome of the opposition.  In the final reckoning, the patent application may emerge unscathed, it may be refused, or it may end up being granted subject to narrowing amendments. 

The patent opposition system recognises that the examination process is imperfect.  Examiners have limited time, resources and technical expertise.  Therefore, they may not always find the closest and most relevant prior art, or spot every technical and legal issue that might be identified by a motivated competitor to the patent applicant, equipped with a team of technical and legal experts.  Furthermore, opposed applications are presumably those that are of greatest concern to competitors, enabling the system to weed out invalid claims that have the greatest potential to unfairly stifle competition.

In the years prior to 2016, the number of oppositions filed each year was fairly consistently between 100 and 120.  In recent years, however, it has commonly been between 40 and 60.  In other words, there are now only about half the number of patent oppositions being filed than was the case just a decade ago.  So, if oppositions play an important role in the Australian patent system – and the policy rationale for having them asserts that they do – is it possible that they are now less effective than they once were?  And, if so, then why?

In this article, I will present data on all patent oppositions filed between 2008 and 2023.  I will demonstrate that the decline in patent oppositions appears to be associated with the commencement of the Raising the Bar (‘RtB’) IP law reforms in 2013.  Among other things, the RtB reforms introduced more stringent standards of patentability, particularly in relation to inventive step and the level of disclosure required to support broader patent claims.  The reforms also changed the standard of proof to be applied during examination and opposition proceedings.  I will show that in the post-RtB era, opposition proceedings have more frequently progressed through to a final decision, and that opponents have had somewhat greater success in completely eliminating opposed applications.  However, the overwhelming majority of opposed applications still result in granted patent rights, and in nearly half of all cases the opponent has been wholly unsuccessful and the patent has been granted with the originally accepted claims.

While the data cannot directly reveal the reasons for the significant reduction in opposition filings, I tentatively argue that the change in the standard of proof applied in patent oppositions may have had the unintended consequence of suppressing patent oppositions, and reducing the effectiveness of the opposition system.

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Tags: Australia, IP RAPID, IPGOD, Law reform, Opposition, Raising the Bar

Raising the Bar Has Not Reduced the Patent Acceptance Rate in Australia

Data on patent acceptances into 2021 confirms that the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (‘RtB Act’), which came into effect on 15 April 2013, has had a minimal impact on the rate of patent application acceptance in Australia – and to the extent that an effect is present, it does not run in the direction that might be expected!  Here, I define ‘rate of acceptance’ as the proportion of examined applications that go on to be accepted for grant.  Between 2009 and 2013, the rate at which applications subject to the former (i.e. pre-RtB) provisions were accepted rose from 69% to 72%.  In comparison, the acceptance rate of post-RtB applications has stabilised at around 75% in each year between 2017 and 2021.

Some people may have anticipated that, in raising the standard of inventive step and introducing stricter requirements for enablement and support of claims, the RtB reforms would result in fewer applications being accepted.  I was not one of those people, and I expect that neither were most other patent attorneys.  Those of us who work on behalf of patent applicants are well-aware that, firstly, most of those applicants are seeking patent protection in other jurisdictions that have high standards of patentability, and are not wasting time and money on equivalent Australian applications for inventions that do not meet those standards.  And, secondly, encountering a higher bar to acceptance does not necessarily mean abandoning the application altogether; often it may simply mean settling for a more limited scope of protection.

Perhaps more surprisingly, however, raising standards of patentability has not resulted in applicants making more rounds of amendment to their applications in order to achieve acceptance.  In fact, if anything applications examined under the post-RtB provisions have been, on average, subject to fewer amendments in examination than pre-RtB applications.

Interestingly, in the transition between the two legal regimes, the earliest applications to be examined under the provisions of the RtB Act had acceptance rates in excess of 90%, while acceptance rates of the last applications to be examined under the former provisions fell to below 50%.  These effects are most likely attributable to the respective applicants’ strategies in pursuing early examination of post-RtB applications, and in persisting to the bitter end with some pre-RtB applications.

Another interesting observation is that expedited examination has become increasingly popular in the years since the RtB reforms commenced, rising from just under 6% of all cases in 2014/15 to over 8% in 2020/21.  In particular, expedited examination under the Global Patent Prosecution Highway (GPPH) program rose from just 2.7% of cases in 2013/14 to 5.1% in 2019/20.  In fact, GPPH requests were the majority of all expedited examination requests in every post-RtB year except for the first (2013/14).

Finally, the most recent data confirms (once again) that the duration of patent prosecution (i.e. from examination request through to acceptance, in successful cases) has reduced significantly – from a median of over 600 days, to a little more than 400 days – since commencement of the RtB reforms.  This has been due, in almost exactly equal parts, to the tighter time constraints imposed on applicants, and to reductions in Patent Office delays in commencing examination after a request has been filed.

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Tags: Australia, Examination, Law reform, Patent analytics, Patent law, Raising the Bar

Data on Patent Office Decisions Highlights Impact of Law Reforms, and Continuing Problems with Law on Patent-Eligibility

Since commencement of the Patents Act 1990 in 1991, up until the end of August 2018, the Australian Patent Office has issued 1,851 published decisions (including, in earlier years, decisions relating to applications filed under the 1952 Act but issued under the transitional provisions of the 1990 Act).  Of these, decisions on substantive oppositions to the grant of standard patents have been by far the most common (666 in total).  Indeed, the vast majority of Patent Office decisions relate in one way or another to opposition proceedings, with the next most-frequent being procedural matters associated with oppositions (including decisions on costs, and final decisions following applicant amendments), and decisions on extensions of time to serve/file evidence.

Analysis of decisions issued by the Patent Office over time also highlights the impact of changes in law and practice, including the effect of amendments to the rules governing the grant of extensions of time in patent oppositions which came into effect with the Raising the Bar reforms in 2013.  The rate at which substantive opposition decisions, and decisions on extensions of time to file evidence, have issued since this time are consistent with other data indicating that the reforms have been effective in improving the efficiency of patent opposition proceedings.

Even more remarkable, however, is what the data reveals about the effect of recent changes in practice and case law relating to patent-eligibility of ‘contentious’ subject matter, and in particular of computer-implemented inventions.  Since 21 July 2010, when the Patent Office issued its decision in Invention Pathways Pty Ltd [2010] APO 10, there has been a total of 53 published decisions relating to examination objections asserting that the claimed inventions were not for patent-eligible subject matter (i.e. a ‘manner of manufacture’ under Australian law).  As I have noted on a number of occasions (most recently in Continuing Hostility to Computer Implemented Inventions Lands the Commissioner of Patents in Court. Again. Twice. and Computer-Implemented Inventions and the ‘Ball Point Pen Principle’ – Why the Australian Law on Patent-Eligibility is a Mess), the vast majority of these decisions have upheld the examiners’ objections, resulting in the applications being refused. 

What is even more remarkable about this, however, is that the number of such decisions over just the past eight years is more than double the grand total of just 21 decisions issued over the entirety of the preceding 19 years in relation to all available grounds of examination objection.  Furthermore, 38 of those 53 decisions have been handed down just within the past three calendar years.

As I have said before (e.g. in …Why the Australian Law on Patent-Eligibility is a Mess, linked above), this recent high incidence of applicants taking examination objections to hearings is a bad sign for the state of Australian patent law in relation to subject-matter eligibility.  The large number of decisions is bringing less, rather than more, clarity to the law, reflecting a high level of uncertainty, and a widespread lack of agreement among patent applicants, attorneys, examiners, hearing officers, and judges as to exactly what the law is – or should be – in this area.  And this uncertainty is not good for innovation and investment in digital technologies, because where there is uncertainty around the availability of IP protection, investors can have no confidence in either the ability to defend their own IP position, or of having freedom-to-operate in the relevant technical space.  Uncertainty thus discourages investment, and in this sense works directly against the incentive that the patent system is intended to provide.

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Tags: Australia, Examination, Opposition, Patent analytics, Patent Office, Patentable subject matter, Raising the Bar

Federal Court Offers Little Insight on How Far the Bar Has Been Raised on the Standard of Disclosure in Patent Specifications

Last week I wrote about a recent Australian Federal Court decision on patent-eligibility of a computer-implemented invention, Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421.  There is, however, a further aspect to this decision that may turn out to be of greater significance because, in addition to attacking Encompass’ patents on subject matter and novelty grounds, InfoTrack also sought to have the patents invalidated on the basis that the disclosure in the specification was deficient under the requirements of section 40 of the Patents Act 1990.  I believe that this is the first time that the current provisions, since commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, have received substantive judicial consideration.  Furthermore, given that the decision has been appealed by Encompass (case no. NSD734/2018), and a Notice of Contention filed by InfoTrack, it seems highly likely that the post-Raising the Bar provisions of section 40 will soon be reviewed by a Full Bench of the Federal Court of Australia.  If so, then we may find out just how far the bar has actually been raised on the disclosure requirements.

The former version of section 40 required, among other things, that a patent specification ‘describe the invention fully’, and that the patent claims defining the invention must be ‘fairly based on the matter described in the specification’.  Over time, the courts interpreted these provisions as, in most cases, requiring only that the description should enable a person of ordinary skill in the relevant field to implement something falling within the scope of the claims without further invention, and should provide a ‘real and reasonably clear disclosure’ of the invention that is broadly consistent (or, at least, not inconsistent) with what is claimed.  In practice, this was a pretty low bar that generally allowed applicants to make relatively broad claims despite possibly having disclosed only a single, specific, implementation of an invention.

By comparison, the current version of section 40 requires that a patent specification ‘disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’, and that the claims must be ‘supported by matter disclosed in the specification’.  The intended effect of these changes is, firstly, to require that the description provide sufficient information to enable the skilled person to perform the invention across the full scope of the claims and, secondly, that the scope of the claims should not be broader than is justified by the extent of the disclosure and the contribution made by the invention.  While these intentions are not necessarily apparent from the wording of the provisions, the idea is that they are implied through the use of similar terminology to that used in other jurisdictions (particularly Europe and the UK), as indicated in the Explanatory Memorandum that accompanied the Raising the Bar legislation.

If the changes to the law achieve their intended effects, then the standard of disclosure required, and the concurrence of the relationship between the description and claims, should be substantially enhanced.  I would have to say, however, that there is little in the first instance decision in Encompass v InfoTrack to indicate just how far the bar has been raised.  This appears, at least in part, to be a result of the way the case was argued, which led the court to give greater attention to what the new provisions are not, rather than to what they are.  In any event, it is to be hoped that consideration by the Full Court will be more enlightening.

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Tags: Australia, Enablement, Law reform, Raising the Bar, Support

Sweet! Patent Office Finds Specification ‘Clear Enough and Complete Enough’ to Support Full Scope of Polypeptide Claims

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 raised the standard of disclosure in a patent specification, requiring that it be ‘clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’: Patents Act 1990, section 40(2)(a).  This change from the old ‘fair basis’ provision was intended to align Australian patent law with that of the UK and Europe, requiring the disclosure to be commensurate with the scope of the claims, i.e. that the description should be sufficient to enable the skilled person to perform the invention across the full width of the claims.

So far, there has been no judicial consideration of this new enablement requirement, and until recently there was just one Patent Office decision, CSR Building Products Limited v United States Gypsum Company [2015] APO 72, in which the Hearing Officer found that claims directed to light-weight, fire-resistant gypsum panels did not meet the required standard.  In particular, the panels were claimed in terms of their properties – core density, core hardness, Thermal Insulation Index, and fire resistance – however it was found that the specification did not provide a sufficient disclosure of how to achieve those properties, other than by manufacturing and testing samples.  In this particular case, there were a number of process and starting material parameters that could be varied, but no guidance in the specification on how to adjust these parameters to achieve the claimed properties with reasonable certitude.  (For more information on the CSR decision, see Disclosure and Support in Australian Patent Specifications: Raised Bar Trips Applicant in Opposition.)

As of 14 November 2017, however, we now have a second decision from the Patent Office on the ‘clear enough and complete enough’ requirement, this time in favour of the patent applicant: Evolva SA [2017] APO 57.  In this case, the claims relate to ‘methods and materials for enzymatic synthesis of mogroside compounds, and in particular to glycosylating mogrol using Uridine-5’-diphospho dependent glucosyltransferases (UGTs).’  While that might make sense to  biotechnologist, for the rest of us the invention basically covers methods of making compounds similar to those that are naturally-occurring in the fruit of the vine siraitia grosvenorii (luo han guo or monk fruit), which is native to China and Thailand.  The extract of this fruit is 300 times sweeter than sugar, and thus can be used as a low calorie sweetener.

Evolva’s claimed method involves using an enzyme (polypeptide) to catalyse a reaction resulting in the desired mogroside compounds.  Effective polypeptides are defined in the patent specification in terms of five amino acid sequence listings.  However, the claims are not limited to these sequences, but are drafted to encompass polypeptides ‘having at least 90% sequence identity’ to the sequences set out in the listings.  The examiner had objected that the specification did not provide a ‘principle of general application’ which would enable the invention across its full scope, and that the skilled person would therefore need to produce and test every polypeptide having up to a 10% difference from the listed sequences in order to determine which would work, and which would not.  Therefore – the examiner concluded – the claims were not enabled across their full scope, and the ‘clear enough and complete enough’ requirement of section 40(2)(a) was not satisfied.

While this case might seem, at first blush, to be analogous with the CSR decision, the Hearing Officer here reached the opposite conclusion, overruled the examiner’s objections, and directed that the application proceed to acceptance.  The case demonstrates how the question of what constitutes an enabling disclosure is very much specific to the technology at issue, and to the skills and abilities of the person skilled in the art.  It also provides useful further guidance, in the absence of any judicial consideration as yet, on how the Patent Office will approach application of the ‘enablement’ requirement in section 40(2)(a) of the Patents Act 1990.

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Tags: Australia, Biotechnology, Enablement, Raising the Bar, Sufficiency

Disclosure and Support in Australian Patent Specifications: Raised Bar Trips Applicant in Opposition

Back in November 2015, the Australian Patent Office issued the first published decision to consider enhanced requirements for patent specifications that were introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012: CSR Building Products Limited v United States Gypsum Company [2015] APO 72.

The decision arises from an opposition by CSR Building Products Limited to the grant of a patent on an application by United States Gypsum Company.  The invention disclosed and claimed in the application relates to a new form of light-weight fire-resistant gypsum panels used in construction, e.g. as wall or ceiling panels.  This subject matter may not seem very exciting to most readers, however the decision itself should be of interest to all Australian patent applicants.

The Commissioner’s Delegate who heard the opposition determined that US Gypsum’s claims satisfied the requirements of the novelty and inventive step.  However, they failed to meet the new requirements for ‘disclosure’ and ‘support’.

In very broad terms, the ‘disclosure’ requirement obliges a patent applicant to teach the skilled reader how to put the invention into practice.  Under the ‘old’ law (prior to 15 April 2013) it was enough to teach just one way of doing so, and the applicant might then be entitled to claim as broadly as the prior art would allow.  Under the updated law, however, the idea is that the teaching provided by the applicant should enable the skilled reader to perform the invention across the full scope of the claims.  Broad claims should therefore require a more comprehensive disclosure of how to work the invention in a correspondingly wide range of implementations.

The ‘support’ requirement dictates, from a different perspective, how broadly the applicant may be permitted to claim their invention.  Whereas ‘disclosure’ is about the ‘how’ to work the invention, ‘support’ is about ‘what’ the inventor has actually contributed to the world.  Under the old law of ‘fair basis’ it was pretty much enough for an applicant to be consistent about how broad a patent they would like to receive, regardless of the actual contribution made.  Under the updated law, if the inventor has merely developed one new and improved way to do something, then that may be as much as she is entitled to claim.  However, if an invention is based upon the discovery of a new and previously unknown general principle that can be applied, without further invention, to produce a range of improved results, then this may provide support for a correspondingly broad claim.

The US Gypsum decision illustrates how the bar has been raised on disclosure and support, and demonstrates how the new provisions may be applied to prevent the grant of unduly broad patents.

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Tags: Australia, Enablement, Raising the Bar, Support

Australian Patent Office Rejects ‘Free Energy’ Application for Lack of Utility

Back in April I published an article about patenting perpetual motion and free energy machines.  One of the points I made in that article was that prior to the passage of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 it was actually possible to obtain a patent in Australia for such a device, even though it could not work because it would violate fundamental laws of physics.
As I explained, the Raising the Bar reforms made it possible, for the first time, for Australian patent examiners to object to the grant of a patent on the basis that the claimed invention is not useful.  At that stage, however, I was unable to identify any case of a ‘perpetual motion’ application to which such an objection had been raised.

On 31 August 2015, however, an examination report was issued in relation to Australian patent application no. 2011201103, which is entitled ‘Perpetual Productive Motion Device’.  Among other matters raised in the report, the examiner has objected that ‘the claimed invention does not achieve the use promised by the patentee in the specification, and have a credible use.’  This may be the first time that this type of objection has been raised in Australia against a ‘perpetual motion’ or ‘free energy’ apparatus.

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Tags: Australia, Patent law, Patent Office, Raising the Bar, Utility/usefulness

Patenting Perpetual Motion

You cannot build a ‘perpetual motion machine’.  The fundamental principle underlying practical perpetual motion (were it to exist) is the production of endless motion without any external source of energy, and despite the practical realities of resistance (e.g. friction) and other sources of energy loss.  In other words, perpetual motion cannot be achieved unless a device is able to produce more energy than it consumes.

Any arrangement purporting to achieve such a result – whether mechanical, electrical, chemical, thermal or otherwise – violates one or both of the first and second laws of thermodynamics.  Physicists, engineers and mathematicians have a very large number of practical and theoretical reasons to be enormously confident that breaking these laws is an impossibility.

If you do not accept the truth of the statements in the above paragraphs, then this may not be the article you are looking for.  You can go about your business – move along!

The issue I want to examine here is not whether you can build a perpetual motion machine (to reiterate – no), but whether you can get a patent for one.  You might think that it should not be possible to secure patent rights over something that violates fundamental laws of physics, and therefore cannot possibly work.  However, such patents have been issued in the past.  During the last two decades the Australian Patent Office has actually granted at least two patents where the nature of the ‘invention’ was advertised in the title – Australian patent no. 671694, ‘Perpetual motion turbine and compressor set’ and no. 687320, ‘Perpetual motion devices (energy producing devices)’.

More generally, applications directed to alleged perpetual motion machines are sufficiently common that the International Patent Classification (IPC) even includes subclasses F03G 7/10 and F03G 17/04 specifically assigned to ‘perpetua mobilia’.  A total of 16 standard patents have been granted in Australia since 1990 for inventions classified in these subclasses.  A number of applications in these subclasses are currently pending.

In short, therefore, it has certainly been possible, in the past at least, to obtain a patent for an alleged perpetual motion machine.  In the following, I shall explain why this was so, and why it may no longer be the case since the passage of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

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Tags: Australia, Patent law, Raising the Bar, Utility/usefulness

The Hard Line on Extensions of Time in Patent Oppositions

Since the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 came into effect on 15 April 2013, new, stricter, rules have applied to parties hoping to obtain an extension of a time period for filing evidence in an Australian patent opposition.

As of the time of writing this article there have been seven published Patent Office rulings on extension requests decided under the new regulations.

Unsurprisingly, considering that an express intention of the new rules was to raise the bar on extensions of time, five of the seven requests considered under the new regulations have been refused. 

However, while the situation looks grim for parties requiring additional time to prepare opposition evidence, things are not as bad as the published decisions might suggest.  By definition, it is typically the most contentious cases that proceed to a hearing and a written decision.  I am aware of a number of recent cases in which extensions of time have been granted, under both the new and old rules, without any need to request a hearing.  Naturally, the majority of clearly worthy applications for extensions will be granted without fuss or fanfare. 

And, as I explain below, there is much to be learned from the failures of those parties that have had to take their requests to a hearing!

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Tags: Australia, Evidence, Extensions of time, Patent Office, Raising the Bar, Regulations

Reining-In Amendments Under Australian Patent Law Reforms

As regular readers will be aware, I have been working with CCH Australia to assist in updating the patents commentary in its Australian Industrial and Intellectual Property ‘loose-leaf’ service (which is also available as an online service).  Among other content, this service provides full text legislation and detailed commentary on copyright, designs, patents and trade marks.

The most recent update to the patents commentary includes coverage of reforms to provisions for amending patents and applications, which were introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  This article discusses some of these reforms, and the corresponding updates to the CCH commentary.

Background

Before the commencement on 15 April 2013 of the Raising the Bar Act, the Australian Patents Act 1990 included some of the most generous amendment provisions in the world.  In extreme cases it was possible, and indeed remains possible for those patent applications to which the former provisions continue to apply, to file a wholly inadequate patent specification, and to correct this defect by amendment up until at least the date of grant of the patent.

For patents and applications filed on or after 15 April 2013, and for pending applications for which a request for examination had not been filed prior to this date, this generosity has ceased to apply.  In common with most other major jurisdictions, it is no longer possible to make amendments which result in any new disclosure.

This change is something that applicants accustomed to being permitted to amend specifications to add additional supporting examples, or new experimental results, will now need to bear in mind.

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Tags: Amendments, Australia, CCH, Raising the Bar

Raising the Bar on Australian Patent Drafting Standards

As regular readers will be aware, for the past few months I have been working with CCH Australia to assist in updating the patents commentary in its Australian Industrial and Intellectual Property ‘loose-leaf’ service (which is also available as an online service).  Among other content, this service provides full text legislation and detailed commentary on copyright, designs, patents and trade marks.

The most recent update to the patents commentary includes coverage of the reforms introduced in the Raising the Bar Act which are directed principally to the quality and scope of patent specifications.  This article discusses some of these reforms, and the corresponding updates to the CCH commentary.

Background

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) introduced numerous reforms to the Patents Act 1990 (Cth), many of which have been designed to lift the standards required for a valid patent to levels comparable with Australia’s major trading partners, such as the US and countries of the European Union.

The impact of some of the reforms is largely beyond the control of patent applicants and their professional advisors.  For example, the introduction of a more stringent test for inventive step means that any existing prior art may have a greater narrowing effect than it would have under the former law.  While skilled drafting of the original patent specification will, as always, maximise the options open to the applicant when unforeseen prior art arises, there is no drafting technique that will enable an applicant to claim a scope of protection for an invention that is simply no longer available under the raised inventive step standard.

There are other reforms, however, that are directed principally to the quality of the specification, and to ensuring that the scope of the patent monopoly claimed by the applicant is justified by the extent of the disclosure provided in the specification.  The skill of the draftsperson certainly plays a role in ensuring that the applicant is able validly to claim the full extent of patent protection to which they are entitled.  Conversely, if a patent specification is inadequate then the applicant may be prevented from claiming a broad scope of protection, even in the absence of pertinent prior art.

Fortunately, most Australian patent attorneys are accustomed to drafting specifications to the standards required by the major foreign jurisdictions.  Now, however, those same standards must be applied even when preparing patent specifications that will be filed only in Australia.

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Tags: Australia, CCH, Enablement, Raising the Bar, Support, Utility/usefulness

Patent Office Enforces Tough New Evidence Extension Rules

Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 (11 November 2013)

In the first published decision of the Australian Patent Office relating to the new Raising the Bar regulations on extensions of time during opposition proceedings, an opponent has been denied an extension to file evidence in support of its opposition.  The decision confirms that the Office will be taking a hard line on applications for extensions.

In its June 2009 consultation paper, Resolving Patent Opposition Proceedings Faster [PDF, 198kB], IP Australia identified delays in opposition proceedings – with oppositions often running for between three and eight years – as one of the issues to be tackled under the Raising the Bar reforms.  Long delays were most commonly due to evidential time-frames, as a result of the Patent Office having only limited powers to refuse requests for extensions of time.

This changed when the Raising the Bar reforms, and in particular the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013, came into effect on 15 April 2013.  New Regulation 5.9 established a more rigorous test under which, unless exceptional circumstances apply, parties preparing evidence in the course of opposition proceedings must act promptly and diligently at all times, and make all reasonable efforts to comply with relevant time periods. 

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Tags: Australia, Evidence, Extensions of time, Patent Office, Raising the Bar, Regulations

Lost In Transition – Opposition, Appeal and Amendment

Suntory Holdings Ltd v Commissioner of Patents [2013] FCA 999 (2 October 2013)

The Federal Court of Australia has, for the first time, considered the effect of reforms to the mechanisms for amending a patent application during appeals from decisions of the Commissioner of Patents which where introduced earlier this year by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  Unfortunately for patent applicant Suntory Holdings Ltd, the changes in the law mean that its previous efforts to amend its application through the Patent Office have been in vain, and it will now have to start again by applying to the court.

Ironically, the reforms were intended to ensure that application to amend in the course of an appeal could be handled more efficiently.  This should be the case in the future, however Suntory has fallen victim to bad timing, and been caught out by the transitional provisions of the Raising the Bar Act.

The same transitional provisions bit Euroceltique S.A. earlier this year, although in that case the patent applicant did not elect to appeal the Commissioner’s decision to the Federal Court.

I have to say, though, that it is not entirely clear to me what Suntory was hoping to achieve by the requested amendments.  It is even less clear why it appealed the Commissioner’s refusal of its application to amend.  I am not complaining, however, since early judicial consideration of the Raising the Bar reforms is helpful to all of us in confirming that they operate as intended!

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Tags: Amendments, Appeal, Australia, Raising the Bar

‘Raising the Bar’ Transition Begins to Bite!

Euroceltique S.A. [2013] APO 30 (9 May 2013)
Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. [2013] APO 34 (30 May 2013)


Two recent decisions of a Delegate of the Commissioner of Patents have focussed attention on transitional provisions in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  In each case the outcome has been unfavourable to the applicant.

1. In the first decision, Euroceltique S.A. has been denied permission to amend its patent application while an appeal of an earlier opposition to the Federal Court remains pending, as a result of the operation of new section 112A of the Patents Act 1990.
2. In the second decision, a request by joint applicants Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. for an extension of time to file a request for examination under the former law, predating the Raising the Bar reforms, has been refused.

As regular readers of this blog would be well-aware, the majority of provisions in the Raising the Bar Act came into effect on 15 April 2013.  Naturally, this act included transitional provisions to define what should happen in the case of applications and other actions commenced before the commencement date, but which remain in-progress after that date.

The most important of these transitional provisions cover the substantive changes to the standards required of a valid patent, including the tests for inventive step, utility, and the level of disclosure required in order to support the full scope of protection claimed by an application or patent.  For these types of reforms introduced by the Raising the Bar Act, the new standards may apply to applications filed before 15 April 2013, but only if a request for examination is not filed until after that date.

However, other amendments made by the Raising the Bar Act have alternative transitional provisions and, in particular, some had immediate effect from 15 April 2013 even in respect of matters already in-progress.

In the short time since commencement of the Raising the Bar reforms, the Patent Office has already had reason to consider the effect of each of these types of transitional provision.

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Tags: Amendments, Australia, Extensions of time, Raising the Bar

‘Raising the Bar’ Raises Its Head in Federal Court

Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd [2013] FCA 583 (28 May 2013)

Less than two months after the majority of provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into effect, the revised law has been considered in a decision of the Federal Court of Australia.

Two aspects of the recent patent reforms have arisen in the dispute between Reckitt Benckiser Healthcare (‘RB’) and GlaxoSmithKline Australia Pty Ltd (‘GSK’).  The first aspect relates to new provisions which are intended to prevent patents from being declared invalid on ‘technical’ grounds arising from a faulty chain of title from an inventor to an ultimate patent-holder.  The second aspect relates to raised requirements for the standard of disclosure required in a patent specification under section 40 of the Patents Act 1990.

To make matters interesting, the decision manages to wrongly interpret the effect of the reforms relating to disclosure under section 40.  Fortunately, on this occasion the error has had no impact on the outcome.  However, the fact that such a seemingly simple error could be made is cause for concern in view of the extensive amendments made to the Australian intellectual property laws, and the long time frame over which the courts will gradually come to consider each of the changes.

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Tags: Australia, Entitlement, Raising the Bar, Validity

Raising the Bar – New Life for Patents of Addition?

If you have never heard of a ‘patent of addition’, I am sure that you are not alone.  Even those of us who practice in a jurisdiction in which these beasts are rumoured to exist have rarely, if ever, actually seen one.  It is not even easy to track one down, or to find out how many of them there may be out there in the wild, since IP Australia’s AusPat database does not provide a facility to search specifically for applications and patents of addition.

However, readers experienced with US patent law and practice may already be familiar with the basic rationale behind the patent of addition, which has much in common with what is known as ‘non-statutory obviousness-type double patenting.’  The principle applied in both cases is that an applicant can be permitted to obtain a second patent for a new, but obvious, variation of an invention already claimed in an earlier patent, but that the second patent may not outlive the first.  In this way, the patentee’s rights are insured, but not improperly extended.

It is possible that one reason why patents of addition have been uncommon in Australia is because the law relating to inventive step has been so weak that they have generally been unnecessary (see my recent article on Australia’s ‘four laws of inventive step’).

However, with the commencement of the Raising the Bar reforms in Australia on 15 April 2013, perhaps the patent of addition will have a new lease on life.  After a decade in the Australian patent profession, I have yet to set eyes on an actual application for a patent of addition, but I have been involved with a number of US applications in which obviousness-type double patenting objections have been raised.

If there is anything to this theory, applicants and their advisors in Australia will want to make sure that they are sufficiently familiar with the patent of addition to identify when it might be useful.

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Tags: Australia, Obviousness, Patent of addition, Raising the Bar

Australia’s Four Laws of Inventive Step

As I reported in a recent article, the Australian Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came full effect on Monday, 15 April 2013.  Among the many reforms introduced by the Raising the Bar Act was a change to the procedure for assessing inventive step, which raises standards to bring Australia’s laws more into line with major trading partners such as the US and Europe.

Of course, it would be unjust to make the changes retrospective – there could be many patents previously granted, and applications previously filed, which would have been rendered invalid overnight.  So the new laws apply only to those applications and patents in which a request for examination is filed on or after 15 April 2013. 

My previous article on this topic included some astonishing statistics on the number of new applications filed in the weeks leading up to commencement of the Raising the Bar reforms.  I have since heard that in the first two weeks of April, around 16,000 requests for examination were filed.  To put this in perspective, in 2012 IP Australia granted a total of 17,724 patents, so those two weeks’ of requests alone added the better part of a year’s worth of examination work to the pipeline.

If you have only a casual interest in Australian patent law, or you have not been following the subject for very long, you might think that there are now two different standards of inventive step to keep in mind when considering the validity of Australian patents and applications.  However, you would be wrong.  In fact, right now there are live Australian applications and patents variously subject to no fewer than four different standards of inventive step.

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Tags: Australia, Law reform, Obviousness, Raising the Bar

‘Raising the Bar’ Raises Patent Filings

As 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!

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Tags: Australia, Examination, Law reform, Patent law, Patent Office, Raising the Bar, Statistics

4 Tips for the Coming Australian Patent Law Reforms

Regular 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.

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Tags: Australia, Law reform, Raising the Bar