The much anticipated Raising the Bar Bill has been scheduled for debate in the Senate in February or March 2012. Although the Bill was scheduled for consideration on the first day of the autumn sittings, February 7 2012, this did not occur and it now appears that the Bill will not be debated until at least February 27 2012, following the Senate estimate hearings. When passed by the Senate, the Bill is expected to be passed promptly by the House of Representatives and receive Royal Assent.
The Bill is divided into six schedules. Schedule 1 raises Australian patentability standards and the requirements for patent specifications. Schedule 2 introduces two patent infringement exemptions, one relating to experimental use and the other relating to regulatory activity. Schedule 3 limits some of the flexibility allowed within the Patents Act by restricting the filing of divisional applications and amendments filed by applicants following an opposition decision. This schedule also introduces amendments to the trade mark opposition system. Schedule 4 provides for the incorporation of patent attorney firms and extends privilege to the clients of foreign patent and trade mark attorneys. Schedule 5 relates to trade mark and copyright enforcement, while Schedule 6 introduces changes to deal with some anomalies present in Australia's IP laws.
The final form of the Raising the Bar Bill does not differ markedly from the exposure draft of the Bill circulated for public comment in March 2011. However, the amendments to the transitional provisions and the commencement date of the legislation are significant. According to the exposure draft, the new patentability standards and specification standards were to be applied to all patent applications for which an examination report had not been issued by the date of commencement. The result was that applicants who had filed patent applications before the new legislation comes into effect would not be able to take any action to ensure that their applications were examined under the present more lenient standards. These provisions have been amended in the Raising the Bar Bill and the new provisions on patentability and specification requirements will now only apply to applications for which examination has not been requested by the commencement of the legislation. The commencement period has also been extended from six months to a fixed 12 month period from the date on which the Act receives Royal assent. This will mean that most patent applicants will be able to take steps to ensure that their applications are examined according to the standards.
If the Bill is enacted in late February or March, the earliest commencement date for the new patentability standards will be late February or March 2013. This will provide patent applicants with a considerable period of time within which to request examination of their Australian applications to ensure that they are considered under the current more lenient provisions. Consideration could also be given to early national phase entry in Australia so that an examination request can be filed before commencement.
The new provisions will be subject to regulations which are yet to be published, but expected to be available for review later this year.
Inventive step is assessed against the background of the common general knowledge in the art as it exists in Australia. Section 7(2) has been amended to remove this territorial limitation such that inventive step will be assessed against the common general knowledge in the art in general. This amendment means that it should no longer be necessary to support an inventive step argument with evidence from an Australian expert.
In addition, the prior art base against which inventive step is assessed has been expanded by the removal from Section 7(3) of the requirement for prior art information for inventive step purposes to be: "information that a skilled person...could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant". The explanatory memorandum explains that although "understood and regarded as relevant" have been deleted from this section, a normal assessment of inventive step would include consideration of whether the reference would be understood and regarded as relevant by a person skilled in the art. The explanatory memorandum is silent on whether it would still be appropriate to ask if the reference is one that would have been ascertained, that is found, by a person skilled in the art, for example by a diligent searcher. The explanatory memorandum does include a warning against the impermissible use of hindsight, and accordingly it is hoped that an inventive step objection will not be sustainable in circumstances where the published reference could only be found with knowledge of the invention.
A new utility requirement is to be introduced according to which a complete specification must disclose a "specific, substantial and credible use" for the invention in a manner that it is appreciated by a person skilled in the art. This requirement is additional to the requirement of Section 18 for an invention to be useful.
Firstly, the level of disclosure required for a provisional application is to be increased to the extent that it requires practically the same level of disclosure as a complete specification.
Also, the disclosure requirement for complete applications will be amended to conform to the corresponding UK provision, and the explanatory memorandum makes it clear that the new provision is intended to be interpreted in a similar manner to the corresponding UK provision. The provision states that the complete specification must "disclose the invention in a manner which is clear enough and complete enough for an invention to be performed by a person skilled in the relevant art". Although the provision does not specifically state that the full scope of the claim must be enabled, the explanatory memorandum indicates that the subject matter of a claim should be enabled across its "whole width". The requirement to disclose the best method of performance of the invention has been retained.
The requirement for a claim to be fairly based on matter disclosed in the specification is to be replaced with a support requirement. According to the explanatory memorandum, the support requirement is intended to encompass two requirements, one being that there must be basis in the description for each claim and the other being that the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art. This second aspect of the support requirement appears to be intended to provide a means for rejecting unduly speculative claims.
The new support requirement will also apply to the assessment of priority entitlement. For a claim to be entitled to a priority date based on a provisional application or other basic application, the subject matter of the claim must be supported by that application. This amendment raises the level of disclosure required to support a priority claim in Australia.
The examination process is to be extended to allow examiners to consider and report on usefulness and prior use. The examination of usefulness will encompass the new utility disclosure requirement as well as the requirement for an invention to be useful.
The balance of probabilities standard will be extended to all grounds examined, not just to novelty and inventive step. The balance of probabilities standard will also apply to reexamination and opposition. These amendments could increase the use of the reexamination and opposition systems as the likelihood of success should be increased.
The amendment provisions will be modified to prevent applicants from adding subject matter to their applications, except when the amendment is to correct an obvious mistake or clerical error. This will bring Australia's amendment provisions into closer conformity with those of other major industrialised countries.
A new provision is introduced which will allow a party to use a patented invention for purposes connected with obtaining an approval required by the law of the Commonwealth, or the State or Territory, or for purposes connected with obtaining a similar approval overseas. The provision specifically excludes pharmaceutical patents because the Patents Act 1990 already includes an exemption for acts solely related to obtain regulatory approval for pharmaceutical products.
An experimental use exemption is to be introduced which will apply to acts done for experimental purposes relating to the subject matter of the invention. This amendment is expected to be well received by the Australian research community.
Both the Patents Act and the Trade Marks Act will be amended to extend the privilege afforded to clients of patent attorneys and trade marks attorneys. These amendments address shortcomings of the privilege provisions, which came to light following Justice Heerey's decision in Eli Lilly and Co & Another v Pfizer Ireland Pharmaceuticals & Another [No 2 137 FCR 573, 2004]. Under the new provisions, privilege will extend to the clients of foreign patent and trade mark attorneys, as well as to communications with third parties, in circumstances where privilege would have applied if the patent or trade mark attorney were a lawyer.
The Bill introduces a new 12 month grace period into Section 9 to deal with secret use that would otherwise invalidate a claim. The existing grace period has also been clarified so that it now clearly applies to earlier disclosures that fall outside the scope of a claim under consideration, but which would otherwise render the claim obvious. The new provisions will only apply for prior disclosures or prior secret use occurring after the date of commencement of the legislation.
The new Section 22A is to be introduced to ensure that a patent will not be considered invalid merely because it was granted to the wrong person. The transitional provisions clarify that this new provision applies retrospectively to existing patents.
Modified examination based on a corresponding patent granted in a recognised country will no longer be available under the new provisions. Modified examination can proceed if requested before commencement.
Revocation of acceptance
The commissioner will be given a broad power to revoke acceptance of applications, or to revoke certification of innovation patents. According to the explanatory memorandum, the discretionary power is intended to provide an inexpensive and straightforward process for the rectification of administrative errors in accepted applications. However, the provision does not appear to be limited to the rectification of administrative errors.
The provisions relating to non-infringement declarations will be amended to clarify that: a person seeking the declaration does not need to be a patent owner, and; that the declaration must refer to a granted patent. The provisions will also be amended to clarify that the declaration can relate to past, present or proposed conduct. At present, the person seeking the non-infringement declaration must pay the legal costs of all parties "unless the court otherwise orders". Under the new provisions, the Court will be given the discretion to award costs in the usual manner. It is expected that the winning party will be entitled to their costs, unless the Court thinks fit to order otherwise.
Rectification of the Register
In line with the introduction of Section 22A, a new provision is to be introduced to allow the commissioner to rectify the register to correct an error or omission, or to correct ownership of the patent. The commissioner is not able to make these corrections if Court action is pending for the patent. This provision will allow patent owners to correct the ownership of their patents in circumstances where, at the time of granting, the named patent owner was not entitled to the patent.
Michael Caine is a patent attorney and partner of Davies Collison Cave, where he heads the firm’s organic chemistry and pharmaceutical group. His professional activities include drafting and prosecuting patent applications, providing patent infringement and validity advice, conducting patent oppositions, filing and prosecuting patent term extensions and providing strategic patenting advice. Much of his work is in relation to the patenting of pharmaceuticals by local research institutes and foreign pharmaceutical companies. Michael is a fellow and council member of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA), where he is convenor of the Patents Legislation Committee, and member of the Patent Consultation Group operated by IP Australia. His IPTA activities included the preparation and filing of submissions in respect of IP Australia’s patent law reform proposals which lead to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. Michael is also an active member of FICPI and recently completed an extensive report on the operation of Article 4C(4) of the Paris Convention.