IP Reform - changes to patentability standards
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 patentability standards. The information below has been developed to help you to understand the changes to patent standards and how they may affect the way you do business with us.
The Patents Act 1990 sets out a number of standards that must be met for a patent to be valid. These include whether the invention claimed is:
- Patentable subject matter (is a manner of manufacture)
- Novel over the related prior art
- Inventive/innovative in regard to the prior art and is useful.
The patent specification must also fully describe the invention and the claims be fairly based on what is described.
The Raising the Bar Act introduces a number of changes to patentability standards. These changes have been introduced to raise the standards required to support the grant of a patent in Australia and to make them more consistent with those applying in other countries.
They are also intended to address concerns that current thresholds have suppressed competition and discouraged follow on innovation.
The following changes apply to applications and subsequent patents having an examination request on or after 15 April 2013:
- The specification will be required to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
- The disclosure required to secure a priority date must also be clear enough and complete enough for the invention disclosed in the application to be performed by a person skilled in the relevant art.
- An amendment of the specification is not allowable if it claims or discloses new matter.
- Replacement of fair basis with the requirement that the claims are supported by the description.
- The specification will be required to disclose a specific, substantial and credible use for the invention.
- Removing the geographical limitation of common general knowledge for inventive and innovative step determinations and removing the requirement for prior art documents to be "ascertained" before they can be taken into account for inventive step.
How the changes will affect you?
The changes have modified previous patentability standards and introduced new standards that will need to be considered when applying for and prosecuting a standard or innovation patent.
The standard for describing the invention fully will be that the specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. The description must be sufficient for a skilled person to extend the teaching of the specification to perform the invention across the full scope of the claims. This will need to be considered when drafting and filing an application.
An amendment of the specification is not allowable if, after amendment, the specification would claim or disclose matter that extends beyond that disclosed in the specification as filed. Consequently applicants will need to ensure that a full description of the specification is provided at filing. Further description cannot be added later.
Fair basis will be replaced with a support requirement. This means that the claims must not be broader than is justified and must be consistent with what is described. This will need to be considered when drafting and filing an application.
The standard for usefulness has been amended to further require that the specification disclose a specific, substantial and credible use for the claimed invention. This will need to be considered when drafting and filing an application.
The changes to inventive step will mean that all information that was publicly available at the priority date of the claimed invention may be taken into account when assessing the inventiveness of a claimed invention. Limitations to local common general knowledge for inventive and innovative step considerations have been removed.
Frequently Asked Questions
How will I know what patentability standards apply to my patent application?
The effect of the changes is detailed in the legislation. In general, changes to patentability standards will apply to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.
What is the requirement for clear enough and complete enough disclosure?
Subsection 40(2)(a) requires that a complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
The complete specification needs to provide sufficient information to allow the person skilled in the relevant art to perform the invention over the width of the invention claimed, without undue burden or the need for further invention.
What are the changes for priority documents?
The priority document needs to contain a clear enough and complete enough disclosure to enable the person skilled in the relevant art to perform the invention to establish the priority date as the filing of the priority document.
What are the changes involving replacement of fair basis?
Under the Raising the Bar Act fair basis was replaced by the requirement of Support for the claims.
The requirement for support is that the claim or claims must be supported by matter disclosed in the specification. This is to ensure that the scope of the claims is not broader than justified by the extent of the description, drawings and the contribution to the art.
What are the changes to Usefulness?
There is an additional requirement that a specific, substantial and credible use is disclosed in the specification.
What is a specific use?
A use that is specific to the claimed subject matter that provides a well-defined and particular benefit to the public.
What is a substantial use?
A use that corresponds to a significant real-world use. (Without the need for further experimentation to identify or confirm the real-world use).
What is a credible use?
A use that a person skilled in the art would accept as logical and consistent with the state of the art.
What are the changes to inventive step/ innovative step?
- The current geographical limitation (acts done in Australia) on common general knowledge will be removed.
- The current requirement that prior art documents for inventive step be "ascertained, understood and regarded as relevant" by a person skilled in the art will be removed.
What is the affect of the changes to inventive step/innovative step?
The removal of the geographical limitation on common general knowledge would mean that the common knowledge of workers in a particular field will be taken into account not just the knowledge and skills of relevant persons in Australia.
The removal of the requirement that prior art documents for inventive step be "ascertained, understood and regarded as relevant" ensures that the inventive step consideration begins on the basis of information made public anywhere in the world before the priority date.
How will we apply the new requirements?
The Australian courts will ultimately interpret the meaning of the new legislation. We have however developed guidelines for examiners in the Patent Manual of Practice and Procedure.
Last Updated: 05/4/2013
