IP Reform - changes to patent examination
5 Apr 2013
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 comes into full effect on 15 April 2013. One of the areas that will see change as a result of the Act is patent examination. The information below has been developed to help you to understand the changes to patent examination and how they may affect the way you do business with us.
The changes to patent examination are intended to raise the quality of granted patents. This will align Australian patent standards more closely with international patent standards and give innovators further certainty when applying for a patent in Australia and other jurisdictions.
A range of changes have been made to patentability standards (see Patentability Standards feature article) and patent examination as a result of the IP Reform, including the following:
- For all statutory requirements for patentability that are relevant at examination, the standard of proof will be "balance of probabilities". The higher standard of proof will apply to applications where an examination request is filed on or after 15 April 2013. It will also apply to opposition and re-examination.
- Utility and public information arising from doing an act (eg prior use) can be considered in the examination of applications having an examination request filed on or after 15 April 2013.
- Re-examination will include a wider range of grounds of examination. This will apply regardless of when the application was filed or the patent was granted.
- If an administrative error occurs, acceptance, certification and allowance of amendments can be revoked by the Commissioner.
- Applicants will not be able to request modified examination on or after 15 April 2013.
Simplifying the IP system in this way will remove procedural hurdles, streamline processes and ensure that the IP system is fit for purpose in an increasingly globalised environment.
Frequently Asked Questions
What is the higher standard of proof that will be used in examination of patent applications?
The higher standard of proof requires the Commissioner to accept a standard patent application or certify an innovation patent only if they are satisfied, on the balance of probabilities, that:
- the invention is a manner of manufacture
- the invention is novel
- the invention is inventive/innovative
- the invention is useful
- the specification complies with section 40
- the invention is a patentable invention under subsection 18(2) and 18(3)
- other requirements prescribed in the Act and Regulations are met.
Where will the higher standard of proof apply in relation to examination?
The transition provisions in relation to this change are detailed in the legislation. In general, the higher standard of proof will apply to standard patent applications and innovation patents where examination is requested on or after 15 April 2013.
Which applications will include consideration of utility and public information arising from doing an act?
The transition provisions in relation to this change are detailed in the legislation. In general, examination of standard applications and innovation patents having an examination request on or after 15 April 2013 will include these considerations.
What will examiners consider in assessing utility?
Examiners will consider whether the complete specification discloses a specific, substantial and credible use. They will also consider whether the claimed invention achieves the benefit promised in the specification.
What is 'doing an act'?
'Doing an act' includes prior use of the invention. It also includes making an oral disclosure of the invention.
What is now included in the grounds of re-examination?
The wider grounds of re-examination require the Commissioner to report on:
- Whether the specification does not comply with subsection 40(2) or 40(3).
- Whether to the best of his or her knowledge the invention so far as claimed is not a manner of manufacture, is novel, is inventive/innovative or useful.
- Whether the invention is not a patentable invention under subsection 18(2) or 18(3).
Which applications or patents will have the new re-examination grounds applied to them?
The new grounds will apply to any re-examination conducted on or after 15 April 2013 regardless of when the application or the request for normal examination was filed.
When will the Commissioner revoke acceptance or certification?
The Commissioner will have the discretion to revoke acceptance of a standard patent application or certification of an innovation patent if he/she is satisfied that the application should not have been accepted or certified and it is reasonable to revoke acceptance/certification in all the circumstances.
This will occur if an administrative error occurs during processing of an application or patent. The applicant has a right to be heard before the Commissioner revokes acceptance or certification.
What are the consequences of revoking acceptance or certification?
The application is taken to have never been accepted or certified and allowance of any amendments that occurred at the same time is also revoked. The Commissioner will rectify the error and re-commence examination.
Can the period for acceptance be extended if the time for acceptance or certification is imminent and acceptance or certification is revoked?
Yes. The Regulations provide for an extension of 3 months from the date the decision to revoke acceptance or certification is made.
Will requests for modified examination filed before 15 April 2013 be examined after 15 April 2013?
Yes -requests for modified examination filed before 15 April 2013 will be examined under existing provisions for modified examination.
How will we apply the new requirements?
We have developed guidelines for examiners in the Patent Manual of Practice and Procedure. This is available to the public on our website.
Last Updated: 05/4/2013
