Robert Miller, Spruson & Ferguson
On March 2 2011, the Australian Government released for comment a draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, and an accompanying Explanatory Memorandum (EM).
The draft Bill removes the local restriction on the person skilled in the art (PSA) which limited the common general knowledge (CGK) to that in Australia, bringing Australia’s obviousness tests closer to those of the USA, Europe and Japan. In the assessment of obviousness, CGK can be combined with a single piece of prior art, or with a combination of prior art if the PSA would be “reasonably expected” to combine the prior art. This change will make it easier for Patent Office examiners to sustain inventive step objections.
Standard of proof
A higher standard of proof will be imposed by the examiner when deciding to accept a patent application. The present situation requires the examiner to be satisfied that the invention as claimed is novel and inventive and apply a benefit of the doubt test to other examinable grounds. The draft Bill introduces the requirement that the examiner be “reasonably satisfied” that the invention as claimed meets all patentability criteria.
The draft Bill defines the existing requirement of utility, as being a “specific, substantial and credible use for the invention”, and requires that use to be disclosed in the specification. The draft EM explains that the language will have the same meaning as applied by the US Courts and USPTO. A modified enablement requirement requires that specifications must be “clear enough and complete enough” for a skilled person to perform the invention. The fair basis rule, and all its long line of case law, is being replaced. Claims must now be “supported by matter disclosed” in the specification, and they will be applicable for establishing priority, making amendments and internal claim support.
Exemptions from infringement
A specific infringement exemption for acts required to obtain regulatory approval, within or outside Australia, which would otherwise have been an infringement, is proposed. This complements an existing infringement exemption for regulatory approval of pharmaceuticals. The new exemption will apply to all technologies for which regulatory approval must be obtained before release, such as veterinary and agricultural products, medical and electrical devices. As with the existing pharmaceutical exemption provisions, the exempted use must be solely for obtaining regulatory approval, thereby preventing the provision being used to exempt activities such as stockpiling of the patented product for later sale or manufacture for export markets.
An explicit exemption from infringement for acts done for “experimental purposes” is also proposed. This is stated in the EM to be consistent with the “policy objective of freeing researchers to innovate”. Importantly, the provision is not intended to only apply to circumstances where activities are undertaken solely for experimental purposes.
This option, available since the early 1970s, is to be removed. The provision has not been extensively used and differences in examination standards and laws have diminished its value.
The draft Bill is undergoing a period of public consultation before being formally introduced into parliament for debate.