Australia: Patents Office introducing amendments to Stifle Patents
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Australia: Patents Office introducing amendments to Stifle Patents

IP Australia is proceeding at pace with implementing the Government's response to the Productivity Commission's Report to severely curtail the rights of patent holders.

The proposed legislation and implementation is directed at the introduction of a number of problematic changes:

1) The abolition of the Innovation Patent system. The Innovation Patent system included a lower level inventiveness threshold similar to the Utility Model System of Germany, China and other countries. Allowing for lower inventiveness patents was deemed undesirable by the Productivity Commission and they recommended abolition. It is now important for applicants to seriously consider filing innovation patents before the repeal legislation is enacted.

2) Raising the inventive step requirements, somewhere in excess of the test of the European Patent Office, as a further restriction on grant. This is directed at increasing the hurdle requirement for grant.

3) Requiring applicants to disclose the "technical features" of their invention. This is an attempt to codify in legislation the European precedent of technical features. No doubt this will cause an excessive extra layer of unnecessary work for applicants.

4) Introducing an objects clause to the Patents Act 1990. Whilst the proposed clause is ephemeral, the likely subsequent discussion by patent litigants will increase the burden of litigation.

5) Making it easier to invoke the Crown Use provisions or Compulsory Licensing provisions. Again, restricting the rights of patent holders to fully exploit their patented inventions.

Whilst the Patents Office is conducting some public consultation, it is highly likely the Office will proceed with each of the above proposals.

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

more from across site and ros bottom lb

More from across our site

Partners and other senior leaders must step up if they want diverse talent at their firms to thrive
European and US counsel reveal why they are (or aren't) concerned about patent quality and explain how external counsel can help
Firms such as Bird & Bird and Taylor Wessing have reported rising profits and highlighted the role of high-profile IP disputes and hires
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers in the corporate and IP practices discuss where the firm can steal a march on competitors, its growth plans in London, and why deal lawyers are ‘concertmasters’
Kathleen Gaynor, DEI specialist at Phillips Ormonde Fitzpatrick, says deliberate actions can help law firms reach diversity goals
Scott McKeown, who moved to Wolf Greenfield one year ago, says the change has helped him tap into life sciences work and advise more patent owners
The winners of our Asia-Pacific Awards 2024 will be revealed during a ceremony in Malaysia on September 26
Zach Piccolomini of Wolf Greenfield explains how to maximise your IP portfolio’s value while keeping an eye on competitors
Witnesses at a Congressional hearing debated whether reforming the ITC is necessary and considered what any changes should look like
Gift this article