Changes to patentability standards

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 meant to deal with concerns that current levels have suppressed competition and deterred follow on innovation.

The following changes apply to complete patent applications made on or after 15 April 2013, standard patents where the request for examination is made on or after 15 April 2013, and innovation patents granted 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 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 (Australia only) on common general knowledge will be removed. This means that relevant technical expertise anywhere in the world will 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.

Changes to patent examination

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 and patent examination as a result of the IP Reform, including the following:

  • The 'balance of probabilities' standard will apply for complete patent applications having an examination request on or after 15 April 2013 or complete applications made on or after 15 April 2013.
  • Utility and public information arising from doing an act (e.g. 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

Changes to the timeframes for filing and prosecution of a patent application have been made to reach a balance between giving an applicant enough time to decide whether they wish to pursue examination of the application and reducing delays that are not in the interest of the public. There have also been changes to some timeframes in relation to filing divisional applications and reducing the timeframe for examination of a patent application following the first report. These changes have been made to cut delays in the finalisation of patent applications. This will reduce the uncertainty as to the scope of the eventual patent rights to the public.

The following changes will be made to patent timeframes:

  • 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, or complete applications made on or after 15 April 2013.
  • For Standard Divisional Applications made on or after 15 April 2013 the time for filing will be limited to within three (3) months of the advertised acceptance date of the parent patent application.
  • Conversion of a Standard Patent Application into a Standard Divisional Application will be limited to within three (3) months from advertisement of acceptance of the parent Patent Application and no later than acceptance of the Divisional Application.

Searches and search fees for patents applications

The Preliminary Search and opinion (PSO) is optional and can be requested on standard complete applications prior to submitting a request for examination. The PSO was introduced to provide applicants with an early indication of any shortcomings in their application. It can also provide the public with useful information about the likelihood of a patent being granted and the likely scope of any monopoly. The fee for a PSO is $2200.

Previously Article 15(5) - international-type searches were available for both complete and provisional applications and there was no provision in the old legislation for a PSO or for a search fee at examination.

As of 15 April 2013, Article 15(5) searches are no longer be available for complete applications and applicants will need to request a PSO if they want a search done on a complete application outside of examination.

Key changes

A new voluntary product, called the Preliminary Search and Opinion (PSO), will be available for complete Standard Applications filed on or after 15 April 2013.

  • The voluntary PSO needs to be requested prior to submitting a Request for Examination.
  • PCT 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 Notice of Entitlement

A patent is granted to the inventor or to a person who derives entitlement to the invention from the inventor. Under the Act and Regulations the applicant for a patent is taken to be a person claiming entitlement (the nominated person).

Unless there is contrary evidence the Commissioner will grant a patent to the applicant but requires them to file an explicit statement asserting their entitlement. Where entitlement is incorrect there are a number of ways under the Act for the ownership of an application or patent to be corrected. The Commissioner also requires statements of entitlement to be filed in other circumstances, including claiming priority from another application.

Previously notices or statements of entitlement were required to be filed before acceptance of a standard patent application. To streamline the application process, statements of entitlement to grant and to claim priority are required to be included in all requests for examination filed on or after 15 April 2013. This requirement applied to eServices and B2B customers from 23 March 2013.

Key changes

  • The Statement of Entitlement replaces the Notice of Entitlement
  • The Statement of Entitlement must now 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.

Patents applications will no longer be 'sealed'

The process of 'sealing' refers to the act of applying a physical seal (originally an embossed wax seal) to the paper patent deed. From 15 April 2013 the current patent status of 'sealed' will be aligned with the internationally recognised term 'granted' and the patent details will be registered in the Register of Patents. The move away from physically 'sealing' a patent also allows us to provide an electronic means of grant. This will improve the Australian patent systems ability to conduct business electronically.

Key changes

  • AusPat (Our online patent search system) now shows accepted and in force patents as 'granted'.
  • All references to the term 'sealed' will be replaced by 'granted' for records in AusPat
  • The Australian Journal of Patents shows the status of 'sealed' for patents granted prior to 15 April 2013.
  • The Deed of Letters Patent has been replaced by a Certificate of Grant. This will apply to both standard and innovation patents.

Patent Oppositions

Filing of evidence in oppositions

Parties will no longer need to serve documents and evidence on the other party. They will only need to file opposition documents and evidence with IP Australia.  IP Australia will then give the other party the evidence.  We will also advise them when any future statutory time periods commence for them to file documents and evidence to support their claims. This will reduce disputes about meeting statutory time periods.  IP Australia, rather than the individual parties, would oversee compliance with the beginning and ending of the time period. IP Australia will wherever possible direct and use electronic means for the filing and giving of evidence and documents

Extensions of time to file evidence

A major cause of lengthy opposition proceedings are the extensions to the various time periods for providing evidence.  The regulations will introduce a more rigorous test to get an extension of time to file evidence. Except for exceptional circumstances, the filing party must act promptly and diligently at all times during the opposition period. They must also make all reasonable efforts to comply with relevant time periods.

Filing of evidence in oppositions - confidentiality between parties

Sometimes, confidential evidence is supplied in opposition cases. Previously, parties arranged confidentiality agreements with each other before serving confidential evidence.
Parties will continue to be responsible for arranging any confidentiality agreements with the other party before filing evidence. IP Australia will not have any role in imposing confidentiality agreements agreed privately between the parties.
Regardless of any agreement between the parties, legislation dictates whether filed evidence is published or not. The Commissioner or Registrar will continue to apply the relevant Act or Regulations to determine if the filed evidence should be published.

Key changes to Patent oppositions

  • The periods for commencing oppositions have been altered.
  • Parties will file documents with the Commissioner rather than serve them on the other party. The Commissioner will then give a copy to the other party.
  • The Statement of Grounds and Particulars must be accompanied by a copy of documents mentioned in the statement.
  • Procedural oppositions will be managed by directions.
  • Extensions of time to file evidence will be considered against a more stringent test.
  • Further evidence is no longer available.

Incorporation and Serious Offence Notifications

Two of the changes made see the introduction of;

  • Companies being able to apply for registration as an incorporated patent attorney or incorporated trade marks attorney.  
  • Registered patent attorneys and registered trade marks attorneys will be required to notify the Designated Manager in writing if they are charged with a serious offence.