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.This project is progressing well, with many of the reforms introduced by the Raising the Bar Act now incorporated into the commentary, along with a range of further revisions bringing other aspects of the commentary up-to-date, such as the recent approach of the courts to the tests for ‘manner of manufacture’ and novelty. The commentary now also includes a comprehensive guide to the different criteria for assessing inventive step which apply to patents now in force, which depend upon when the application was originally filed and/or examined.
One of the topics covered in the most recent update to the patents commentary is the across-the-board application of the ‘balance of probabilities’ test in decision-making by the Commissioner of Patents, which was introduced by the Raising the Bar reforms. Before 15 April 2013, patent applicants had long enjoyed the ‘benefit of the doubt’ in relation to many aspects of the review of applications conducted by the Patent Office of IP Australia.
For example, the questions of whether a patent application related to eligible subject matter, under the ‘manner of manufacture’ test, whether the invention was useful, and whether the claims were clear, concise and ‘fairly based’ on the description in the patent specification, were all to be decided in favour of the applicant in the event of any doubt. Prior to 2002, the same benefit also applied to the crucial decision as to whether a claimed invention was new, and involved an inventive step.
The applicant enjoyed a similar position during contested opposition proceedings, with the Patent Office being obliged to allow an opposed application to proceed to grant unless it were practically certain that the resulting patent would be invalid. This significant onus of proof upon the opponent also applied in the case of an appeal of an opposition decision to the Federal Court.
Tags: Australia, CCH, Patent law, Patent Office, Standard of proof
