The substantive amendments to the Patents Act, encompassed in the
Intellectual Property Amendment (Raising the Bar) Act, have recently
entered into force.
The new legislation enacts a number of substantive changes to our
system. These include the adoption of a European-style obviousness
standard where material from anywhere in the world can be used in
establishing obviousness. This will allow examiners to take objections
on obviousness where the primary prior art document was unlikely to be
found by the skilled person in the art in Australia.
The amendments also provide for a somewhat controversial and broad
experimental-use exemption to patent infringement. The terms of the
permitted experimental use include "improving or modifying the
invention". The legislation would appear to directly encourage
"inventing around" activities to eliminate opportunities for avoid
infringement. Given Australia does not subscribe to the "doctrine of
equivalents" principles of the United States, it may provide strong
incentives for the wily infringer to implement an invention-around
programme.
The Patent Office has also sought to reduce examination times for
consideration of amendments and arguments and to reduce the applicant's
ability to file a divisional application to keep a case alive (a Request
for Continued Examination-type continuation application) when the
reduced examination period runs out.
 |
| Peter Treloar |
Shelston IP
Level 21, 60 Margaret Street
Sydney NSW 2000, Australia
Tel: +61 2 9777 1111
Fax: +61 2 9241 4666
email@shelstonip.com
www.shelstonip.com