FOR IP PROFESSIONALS

IP Reforms - Top issues that may affect you

22 Feb 2013

April 15, 2013 is fast approaching and there are many changes as a result of the Intellectual Property Laws Amendment (Raising the Bar) Act that will affect the way you do business with us.

This is a comprehensive change process and we are committed to keeping you up-to-date and helping you prepare for these changes. Below is a summary of the major changes that may affect you as a result of the Raising the Bar Act.

The purpose of the reforms is to improve the legislation that covers IP rights. For more information on how these changes support and encourage innovation visit our IP reforms page.

In March we plan to have information available on each subject.

Changes to patentability standards for patents

The following will apply to applications and 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 claimed in the application to be performed by a person skilled in the relevant art.
  • 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.
  • Changes to Inventive Step and Innovative Step
    • The current geographical limitation (acts done in Australia) on common general knowledge will be removed. This means that acts done anywhere in the world constitute common general knowledge.
    • 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.

Have you thought about…
Communicating the new patentability standards to your clients?

Changes to patent examination

  • The ‘balance of probabilities’ standard will apply for patent applications having an examination request on or after 15 April 2013.
  • Utility and public information arising from doing an act (eg. prior use) can be considered in examination of those patent applications.
  • Modified examination is no longer available.
  • If an administrative error occurs, acceptance, certification and allowance of amendments can be revoked.
  • Re-examination will include most substantive grounds of examination from 15 April 2013 regardless of when the application was filed or patent granted.

Reduced time frames for prosecuting patent applications

  • Time to respond to a Direction to Request Examination will be reduced from six (6) months to two (2) months. This will take effect for Directions issued on or after 15 April 2013.
  • Time to gain acceptance will reduce from 21 months to 12 months for patent applications having an examination request on or after 15 April 2013.
  • For Divisional Applications made on or after 15 April 2013 the time for filing will be restricted to within three (3) months of advertising the acceptance of the parent patent application.
  • Conversion of a Patent Application into a Divisional Application will be restricted to within three (3) months from advertisement of acceptance of the parent Patent Application and no later than acceptance of the Divisional Application.

Have you thought about…
How this change affects your internal workflow / case management procedures?

Searches and search fees for patents applications

  • A new product, called Preliminary Search and Opinion (PSO), will be available for complete Standard Applications filed on or after 15 April 2013.
  • The PSO must be requested prior to submitting a Request for Examination.
  • Article 15(5) searches will no longer be available for complete applications.
  • Where a standard patent application under examination claims an invention which has not previously been searched a new search fee will apply for applications filed on or after 15 April 2013.

Statement of Entitlement for patents

  • Starting on 15 April 2013 a Statement of Entitlement must be provided at the time of filing a Request for Examination.
  • The Statement of Entitlement will include a statement from the inventor and a Statement of Priority.
  • On 23 March 2013 our existing online services such as B2B and eServices will be updated with the following changes:
      • Statement of Entitlement field in the Request for Examination (for Standard Patent Applications only)
      • Removal of the existing Statement of Entitlement fields from:
        • The Standard Patent Application form
        • The National Phase Entry form.

Have you notified your customers to be prepared to nominate entitlement for examination requests?

Patents applications will no longer be ‘sealed’

  • From 23 March AusPat (Our online patent search system) will show patents as ‘granted’.
  • All references to the term ‘sealed’ will be replaced by ‘granted’ for records in AusPat
  • The Australian Journal of Patents will show the status of ‘sealed’ for patents granted prior to 15 April 2013.
  • On 15 April 2013 the Deed will be replaced by a Certificate of Grant. This will apply to both standard and innovation patents.

How current is your terminology…
Ensure your search criteria and/or automated scripts are up to date.

Trade mark examination

From 15 April 2013:

  • Amendments to Section 41 of the Trade Mark Act 1995 - Trade Mark not distinguishing applicant’s goods or services - will take effect.

The presumption of registrability does apply to section 41.

Removing the concept of ‘service’ for oppositions

  • Parties will no longer need to serve evidence and documents upon each other, this will apply to existing and new oppositions for patents, trade marks, designs and plant breeder’s rights.
  • We will receive and give all documents and evidence submitted by all parties related to opposition cases.
  • We will require all opposition evidence and other selected documents to be submitted electronically.
  • Physical evidence will not be filed unless requested by the Commissioner / Registrar.

Be prepared to manage your case files electronically and assist your clients in being comfortable in submitting evidence by electronic means. E.g. take photographs of physical exhibits.

Trade mark oppositions

  • The opposition period will be reduced to two (2) months.
  • From 15 April 2013, the Notice of Opposition will have two (2) components:
    • Notice of Intention to Oppose
    • The Statement of Grounds and Particulars
  • A Notice of Intention to Defend will be introduced for opposition proceedings commenced on or after 15 April 2013.
  • A cooling-off period will be introduced for opposition proceedings commenced on or after 15 April 2013.
  • The assessment of reasons for an Extension of Time relating to opposition proceedings will be more stringent.
  • The period in which to file Evidence in Reply has been reduced to two (2) months for opposition proceedings commenced on or after 15 April 2013.
  • Provisions and fees relating to Further Evidence have been removed for opposition proceedings commenced on or after 15 April 2013.

Patent opposition

  • The opposition period and procedures will change for ‘procedural’ oppositions (including oppositions under s223 and s104) filed on or after 15 April 2013.
  • More rigorous Extension of Time requirements will apply to evidentiary periods commenced on or after 15 April 2013.
  • For oppositions filed on or after 15 April 2013 a Statement of Grounds and Particulars will need to be accompanied by a copy of each document referred to in the statement.
  • A Summary of Submissions must be filed by the opponent at least 10 business days before an oral hearing and the applicant must file a Summary of Submissions at least 5 business days before the hearing for hearings set on or after 15 April 2013.

These changes will affect your case management and work flow processes. Be prepared to adhere to the new steps in the process.

Incorporation & serious offence notifications

  • Patent and trade mark attorneys will be able to register as incorporated attorneys.
  • Incorporated attorneys will be required to maintain adequate and appropriate professional indemnity insurance as well as ensuring that the company has at least one registered attorney Director.
  • Incorporated attorneys must have evidence that the company is a registered company under the Corporations Act 2001.
  • A serious offence is one that involves obtaining property or a financial advantage by deception or fraudulent conduct and is an indictable offence against the law of the Commonwealth, a State or a Territory (or similar offence overseas).
  • A registered attorney must notify the Designated Manager (the Director General of IP Australia) within 14 days of being charged with a serious offence.
  • After being notified of the charge of a serious offence, the Designated Manager may, by written notice, suspend the registered attorney’s registration.

Ensure you have procedures in place to notify us when your Directors change.

More information

Last Updated: 15/9/2012

Meet Elise
Advanced Diploma of Screen and Media

Customer Service Operator
Learn more about working with us

Official Notices

The official notices provide the latest official announcements from IP Australia including fee and legislation changes

Read more

Publications

Our range of guides and booklets will help you understand how to apply for intellectual property and profit from it.

Read more