Raising the bar on Australian Patents

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Karen Spark summarizes the main changes patent applicants need to be aware of.

On April 15, 2013 further major changes to Australian patent law became effective. These changes were the result of The Raising the Bar Act[1] .

The Act made wide ranging changes to various aspects of Australian intellectual property law. However, the most significant changes were to Australian patent law with the primary objective being to raise the standard of Australian patents. The raised standard is brought about primarily through changes to specification requirements and an enhanced ability for Australian patent examiners to raise and maintain patentability objections.

Specification requirements

The amended law bolsters the requirement that an invention is useful and that it works in the manner described in the patent specification. Under the amended law, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification. The disclosure “must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art”. The intent is that the language “specific, substantial and credible” be given the same meaning as is currently given by the US courts and the US Patent and Trademark Office.

A complete patent specification must also 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. Amended section 40(2)(a) of the Act requires enablement across the full width of the claims. The wording of this amended section is similar to section 14(3) of the UK patents legislation[2]. The wording is also similar to article 83 of the European Patent Convention (EPC)[3], which has been interpreted with similar effect. Accordingly, the intention is that section 40(2)(a) be given, as close as is practicable, the same effect as the corresponding provisions of the UK legislation and the EPC.

A specification that provides a single example of the invention may satisfy the new disclosure requirements, but only where the skilled person can extend the teaching of the specification to produce the invention across the full width of the claims, without undue burden, or the need for further invention. It is expected that, where the claims are broad, the specification will need to give a number of examples or describe alternative embodiments or variations extending over the full scope of the claims. This will ensure that the monopoly extends only to that which could reasonably be said to be disclosed and no further.

The amended law continues to require that a complete specification disclose the best method known to the applicant of performing the invention.

Amended section 40(3) no longer includes the requirement that the claims must be “fairly based on the matter described”. Instead this section now requires that the claims must be “supported by matter disclosed”. The amended language is intended to align the Australian requirement with those of overseas jurisdictions (such as the UK). In such jurisdictions, language such as “supported by”[4] or “fully supported by”[5] the description is used. The terms “support” and “fully support” pick up two important concepts[6]. There must be a basis in the description for each claim and the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art. There must also be consistency, or basis, for each claim in the description.

The Act also introduced a number other changes to Australian patent law. The most significant of these changes are:

Novelty and inventive step: Under the amended law, the restrictions on the type of information and background knowledge taken into account when assessing inventive step have been removed. Accordingly, the assessment of inventive step will be made in light of the prior art base at the priority date and the established common general knowledge of the person skilled in the art without geographical limitations. It is expected that questions such as whether the skilled person would have understood and appreciated the relevance of the prior art to the problem the invention was seeking to solve and whether it would be considered a worthy starting point for further investigation or development will still need to be considered. The teachings of individual pieces of prior art information can still only be combined where the skilled person would have reasonably been expected to have combined them.

As a general rule, in Australia the prior art base for the purpose of assessing novelty is restricted to information published and public acts performed before the priority date of the claim in question. However, complete patent specifications filed in Australia (including a PCT application designating Australia) with an earlier priority date but a later publication date than the priority date of the claim under consideration, are relevant when assessing novelty. Such complete patent specifications are commonly called “whole of contents” citations. The amended legislation makes two changes to the definition of the “prior art base” for assessing novelty. The first amendment clarifies that a “whole of contents” citation must have been published on or after the priority date of the claim under consideration. The second amendment specifies that the information considered is the information in the “whole of contents” citation as published.

Balance of probabilities: Under the new law, Australian Patent Examiners will be required to be satisfied “on the balance of probabilities” that a patent granted on an application will be valid. This differs from the old test where an examiner was required to accept a patent application unless it appeared “practically certain”[7] or “clear”[8] that it would be invalid. This new requirement brings the standard of proof required by the Patent Office when dealing with applications and granted patents into line with the standard of proof currently required for deciding a similar matter by Australian courts.

Patent Office grounds for consideration: The amended law also changes the considerations during examination, pre-grant opposition and post grant re-examination procedures. Prior use of an invention can now be considered during examination of an application. Examiners will be able to consider all “prior art information”[9], including information publicly available by the doing of an act.

The grounds for opposition of an innovation patent have been extended to include the ground that the invention is not useful. Previously, such a ground could not be considered during opposition despite it being a ground for revocation in the courts.

During re-examination, all of the substantive grounds considered during examination of standard and innovation patents can now be considered. This means that in addition to considering novelty and inventive step, the Patent Office will be able to consider whether the invention is a manner of manufacture, is useful, is for a human being or is for a process for creating human beings. The Patent Office will also be able to consider whether the specification adequately discloses and supports the claimed invention.

Amendments: Changes to the amendment provisions will prevent an amendment to a complete patent specification to add new matter that would go beyond the disclosure contained in the specification at its filing date. This will prevent an applicant from being able to remedy a situation where the specification as filed contained an inadequate description of the invention.

Priority: The amended law changes the requirements for disregarding earlier applications for the purpose of a priority claim and brings them into line with the requirements in Europe and the United Kingdom. The amended legislation provides that an earlier application made in another convention country must be disregarded if it was made in the prescribed period and has been withdrawn, abandoned or refused, without becoming open for public inspection or serving as a basis for claiming priority. The prescribed period will be more than 12 months from the filing date of the Convention or PCT application.

Grace periods: Under the amended law, any “information made publicly available” by or with the consent of the patentee or a predecessor in title within the 12 months before the date of filing a complete application, will be disregarded for the purpose of assessing novelty, inventive step or innovative step. This aligns the Australian “grace period” provisions with that of the US, Japan and Canada.

It should be noted that the “grace period” provisions only apply when a complete patent application in Australia is filed within the 12 month period. A “complete patent application in Australia” includes an international patent application that designates Australia.

Amended section 9(d)(e) establishes that the “grace period” provisions apply to any secret use of the invention made within 12 months of the filing date of the complete patent application. Hence, under the amended legislation “secret use” will be treated in the same way as “public use” of the invention is treated.

Ownership: Previously, Australian courts have confirmed that grant of a patent to a person named in the patent application as an applicant or inventor, who is not entitled to it, or to some but not all persons who are entitled to it, renders the patent void.[10] New section 22A specifies that a patent is not invalid merely because the patent was granted to a person who was not entitled to it.

Infringement exemptions: The Act introduced exemptions to patent infringement in circumstances relating to obtaining regulatory approval[11] and undertaking experimental research[12].

Deadline changes: The related Regulations[13] also introduced a number of important procedural changes. These include for example reducing the deadline to request examination to two months following issue of a Direction and reducing the deadline for obtaining acceptance to 12 months from the date of the first examination report[14].

Conclusion

It is difficult to comment with certainty on how the Australian Patent Office will respond to the amended patent law.  It is, however, expected that it will become more difficult for an applicant to make amendments and that examiners will be instructed to more carefully consider the scope of the claims of any application, bringing these considerations more into line with the practice of the European Patent Office.

The examination of applications subject to the amended patent law[15] is not expected to commence for some time. This is because the Patent Office was flooded with voluntary requests for examination prior to 15 April 2013 by applicants seeking to avoid the impact of the law changes. It is anticipated that the Patent Office will aim to conduct examination of all of the “old law” applications before commencing examination under the amended law. This means that it is likely to be some time before the full impact of the amended patent law is revealed.

Résumé

Karen Spark

BEng(Hons) FIPTA

Deputy Managing Partner

Karen is the Deputy Managing Partner of Phillips Ormonde Fitzpatrick. She has worked in the Australian patent attorney profession since 1988 specialising in patent and design matters. She has extensive experience in drafting patent specifications for mechanical inventions and prosecuting patent and design applications through to grant both in Australia and overseas. She also provides advice in relation to the proper enforcement of intellectual property rights. In October 2010, the Australian Federal Minister for Innovation, Industry, Science and Research, appointed Karen to the Professional Standards Board for Patent and Trade Marks Attorneys.


 

[1] Intellectual Property Laws Amendment (Raising the Bar) Act 2011/

[2] Patents Act 1977 (UK).

[3] Convention on the Grant of European Patents (European Patent Convention), opened for signature 5 October 1973, 1065 UNTS 199 (entered into force 7 October 1977).

[4] European Patent Convention, Article 84; UK Patents Act 1977, paragraph 14 (5)(c).

[5] Patent Cooperation Treaty, Article 6; draft Substantive Patent Law Treaty, May 2004, Article 10(3).

[6] Guidelines for Examination in the European Patent Office, European Patent Office, April 2009, at 6.1, accessed 6 November 2009.

[7] Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 244.

[8] F Hoffman-la Roche V New England Biolabs 99 FCR 56 at 66-70 and the cases cited therein.

[9] Section 7 and schedule 1 (definitions of ‘prior art base’ and ‘prior art information’), Patents Act.

[10] University of British Columbia v Conor Medsystems Inc [2006] FCAFC 154.

[11] Section 119B Intellectual Property Laws Amendment (Raising the Bar) Act 2011. Effective 15 April 2012.

[12] Section 119C Intellectual Property Laws Amendment (Raising the Bar) Act 2011. Effective 15 April 2012.

[13] Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1).

[14] Applicable to cases where an examination request is filed after 15 April 2013.

[15] Pending patent applications on which a request for examination had not been filed prior to 15 April 2013 and to all applications filed thereafter.