Major changes afoot for Australian Patent Law

Just before Christmas, IP Australia released an exposure draft of an IP Laws amendment bill, together with a detailed accompanying memorandum. The bill and memorandum have only been released on a confidential basis within the IP community.

The effect of the bill is to give effect to many of the changes proposed in the earlier discussion papers, available at:
http://www.ipaustralia.gov.au/resources/news_new_archived_2009.shtml#77.

Some of the highlights in the draft, as foreshadowed in the earlier discussion papers, include:

  • Significant changes to the test for inventive step and expansion of common general knowledge
  • Specific infringement exemption for experimental use relating to the patented subject matter
  • Expansion of infringement exemption for meeting regulatory requirements beyond pharmaceutical inventions
  • Amendments to require disclosure in a patent to be clear and complete enough to allow the invention to be
    performed by a person skilled in the relevant art, and to allow the invention to be performed across the full scope of each claim
  • Requirement of useful to include ‘specific, substantial and credible’ use for the claimed invention
  • Increasing the requirements for disclosure in provisional applications
  • Amendments to extend client attorney privilege when communicating with overseas patent and trade mark
    professionals
  • Standard of proof to be raised for all IP Australia decisions, so that the decision maker must (e.g.) be
    satisfied on the balance of probabilities before accepting the application
  • Simplification and improvement of amendment provisions
  • Limiting the time in which a divisional may be filed
  • Extending the grace period to include secret use
  • Permitting incorporation of patent attorneys on a basis modelled on the scheme existing for solicitors

We will provide detailed analysis as this becomes possible, given the current confidential status of the draft. However, it is important that all our clients understand that this will be the most significant change to Patent law in Australia in the last 20 years, and the effects will be wide reaching.

It will become somewhat more difficult to obtain a patent, and the risks of patents being invalidated or successfully opposed will be greatly increased. The Australian system will be more closely aligned to overseas systems, and will remove many unnecessary differences, while raising the standard for all applicants. The days when foreign multinationals can obtain broader patents in Australia than at home will be over, with real benefits for Australian industry and researchers.

Getting the strategy right from the first patent application, and continuing to make sure the patent scope and the business requirements are aligned will be more critical than ever before.

Watch for more updates on this unfolding issue.

by Peter Franke

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