Alert

Who does this affect?

Anyone who works with patents or in research and development.

What do you need to do?

Review the Consultation Papers and consider whether you would like to make a submission.

Authors
Shyama Jayaswal  
Senior Associate

Sharyn Broomhead  
Solicitor

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Robert Cooper  
Partner
T +61 3 9643 4405

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Wayne McMaster  
Partner
T +61 3 9643 4407

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Sydney
Kim O'Connell  

Brisbane
John Swinson  

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The Australian government is proposing significant changes to the patent system with an aim to harmonise Australia’s laws with its major trading partners. The changes include raising the threshold for inventive step and enacting an ‘experimental use’ defence to patent infringement. Other key changes to patentability criteria include full description, fair basing and priority claim requirements.

Raising the threshold for inventive step (obviousness)

There are a number of proposed changes relating to the test for inventive step, which has been considered easier to satisfy in Australia than elsewhere in the world.

• The test for obviousness will be expanded so that it is assessed with respect to the common general knowledge throughout the world at the priority date, rather than just the common general knowledge in Australia. This change reflects the global nature of contemporary innovation in many industries, and will simplify some evidentiary hurdles in litigation.

• The prior art documents which can be considered when assessing obviousness will also be expanded to include documents which a skilled person could be reasonably expected to have understood and regarded as relevant. The requirement that the skilled person could be reasonably expected to have ascertained the document would be removed. The removal of this restriction may make litigation easier, as evidence would not need to be led on the issue of whether a particular prior art document would have been ascertained. However, the removal of the restriction may also have the effect of making patent prosecution and litigation more expensive, as more prior art documents could be raised for an obviousness objection.

• The test for obviousness would be amended to whether it was “obvious for the skilled person to try a suggested approach, alternative or method with a reasonable expectation of success”. This test is said to raise the inventive threshold from the present test “whether a skilled person would have been led directly, as a matter of course, to try a particular approach with a reasonable expectation of success”. This is a significant change as it would be codifying the test for inventive step in Australia and may put in doubt the applicability of much of the present case law relating to inventive step. In this respect, the ultimate wording of this change will be critical to whether this change achieves the goal of improved certainty.

Amending the law in Australia to be consistent with that in jurisdictions such as Europe and the USA is not prima facie controversial, but these changes will substantially change the approach of lawyers and patent attorneys to the question of obviousness during the prosecution and litigation of patents.

Experimental use defence

The proposed ‘experimental use’ defence to patent infringement is intended to provide certainty in the research community and to encourage innovation.

The defence to patent infringement proposed deems as non-infringing any act performed on a patented invention for the sole purpose of:

• determining how the invention works

• seeking to improve the invention

• assessing whether the patent is valid, what the scope of its claims are or whether a product infringes it, or

• obtaining information required for regulatory approval.

The Paper emphasises that the proposed defence will not be available in respect of any patented invention that is used or applied for the purposes of carrying out an experiment, but is not the subject of that experiment. It will also not apply to the stockpiling of goods or preparation for manufacture at the end of a patent term.

This proposed defence has been previously proposed by the Australian Law Reform Commission and the Australian Advisory Council on Intellectual Property, so its proposal does not come as a surprise. It will give comfort to those in the research community that their activities will not put them at risk of patent infringement and may increase R&D activity in Australia.

Full description, fair basing and priority claims

There are also changes proposed which affect the law on full description, fair basing and priority claims.

• For full description/fair basis, the requirement has been raised to require that the specification provide sufficient detail in the description so that all embodiments which fall within the scope of the claims are enabled. Currently, it is sufficient if the description provides sufficient detail to produce one embodiment that falls within the scope of the claim.

• In addition, the above requirement for full description is one that will be tested at the filing date of the patent application. It will not be possible to amend the description after filing to introduce material to satisfy this requirement.

• For priority claims, the test has been raised to require that the provisional patent specification provide sufficient detail in the description so that all embodiments which fall within the scope of the claims are enabled. This requirement would place a greater burden on Australian inventors to have more of their experimental work completed before filing a provisional patent application and would make it critical to have adequate confidentiality regimes in place prior to that filing.

Conclusion

These significant proposals open discussion on the re-alignment of Australia’s patent laws with those of its major trading partners. They are likely to reduce the number of patents which are granted and may strengthen a revoker’s armoury in patent litigation. They may, however, also increase the expense of patent prosecution as it could be more difficult to obtain grant of a patent.

Submissions on the Papers are currently being received by IP Australia and are open until 8 May 2009.

Click here to view the first Consultation Paper, ‘Getting the Balance Right’.

Click here to view the second Consultation Paper, ‘Exemptions to Patent Infringement’.