14 March 2011
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In 2009, IP Australia (IPA) presented a number of consultation papers aimed at improving Australia’s patent laws. On 3 March 2011 IPA published a draft Bill to amend the Patents Act 1990 (Cth) (the Act) (and other IP legislation which is due to be presented to the Australian Parliament in the 2011 autumn session. The deadline for making written submissions on the draft Bill is 4 April 2011. We have highlighted some of the proposed changes below. A detailed analysis on the more critical changes will be covered in future issues of Breakthrough.
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Inventive step
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The test for inventive step in Australia is currently slightly different to that in other countries, in that inventive step is (i) assessed against documents that a person skilled in the art would be reasonably expected to have ‘ascertained, understood and regarded as relevant’ and (ii) considered against the background of common general knowledge of persons in the art in Australia. The draft Bill includes amendments to remove the italicised requirements that are specific to Australia, to bring Australian practice into line with other countries. If adopted, this may make it more difficult to establish the existence of an inventive step in some patent applications from the time the changes come into effect.
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Utility
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As in other countries, it is a requirement in Australia that an invention have ‘utility’ or ‘usefulness’ to be a patentable invention. To date, Examiners have been unable to refuse patent applications during examination on the grounds of lack of utility. The Bill includes an amendment to introduce utility as an examination ground. In addition, the Bill proposes the insertion of a specific test for utility into the Act based on the test for utility found in the United States Patent and Trademarks Office (USPTO) Examination Guidelines. If introduced, the amended Act will provide that an invention will be ‘useful’ only if it has a ‘specific, substantial and credible use’. For most areas of technology, this should not result in any changes in practice. However, for genetic technologies, it is anticipated that applications not describing the utility of the claimed subject matter sufficiently well will be at risk of being found invalid under this ground.
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Section 40
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Patent legislation across the world generally requires that the claims in a patent specification be ‘supported by’ the matter described in the specification. The language in the Act in Australia for this requirement is that the claims be ‘fairly based’ on the specification. In practice, this has enabled patent applications that are invalid overseas for failure to satisfy foreign ‘support’ requirements to be valid in Australia, due to the more lenient test that applies for ‘fair basis’. The Bill includes an amendment to replace ‘fair basis’ with the ‘support’ requirement in order to bring Australia more into line with other countries, and to set a higher threshold for patentability in this respect.
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Consistent grounds
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There are currently different grounds for arguing the invalidity of a patent or application depending on the stage of the application procedure during which validity is being considered (for example, examination, opposition, re-examination or revocation). The draft Bill proposes amendments to make the grounds available at each stage consistent. This involves expanding the number of grounds available for the Patent Office to assert invalidity during examination and re-examination. This change may make it more difficult for patent applicants to obtain grant of the patent during examination (where their application fails a requirement not previously available to the Examiner), and may provide better opportunities for third parties (and the Patent Office) to revoke a patent in post-grant re-examination proceedings.
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Experimental use exemption
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There is currently no express experimental use exemption to patent infringement in the Act (leaving aside the provisions relating to the obtaining of regulatory approval for pharmaceuticals). The Bill proposes the introduction of a statutory exemption to infringement for certain experimental acts on patented inventions. Griffith Hack, and the wider patent and research community in Australia, have been calling for the introduction of an express experimental use exemption, and the inclusion of this in the draft Bill is welcomed.
The above outline covers only a small selection of a large number of changes proposed in the draft Bill. We will provide a detailed analysis on these and other proposed legislative changes in future issues of Breakthrough.
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By Janelle Borham, Principal, and Dr Lisa Clark, Trainee Patent Attorney
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For further information, or to obtain a copy of the draft Bill, please contact:
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