On 27 February 2012, the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (“the Bill”) was passed by the Australian Senate.
The Bill will amend patent, trade mark and other intellectual property laws and is expected to come into effect in 2013. Together with detailed regulations, the new law will have a significant impact on Australian patent and trade mark practice in Australia.
The Bill now awaits final passage through the House of Representatives, which recommences sitting on 13 March 2012. Our new firm, King & Wood Mallesons, will follow the development of the law and regulations closely and will provide a further alert when they come into effect.
Patent Law Reform
When passed, the law will:
Make it more difficult to prove inventiveness. Currently, only common general knowledge from Australia is taken into account in determining inventiveness. Under the Bill, common general knowledge from overseas can also be taken into account. This will permit experts who have given evidence in overseas proceedings to be used in Australian proceedings.
Increase the volume of information taken into account when assessing prior art. Previously, only information ‘ascertained, understood and relevant’ was considered in a review of prior art. Under the Bill, all information in existence in Australia or overseas can be considered prior art.
Require that a specification disclose a ‘specific, substantial and credible’ use for the claimed invention rather than requiring an invention to have utility.
Require that a patent specification disclose the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the relevant art (the requirement that a complete specification include the ‘best method’ of performing the invention will remain). The new requirement will apply to provisional specifications as well as standard patent applications.
Require that the claims of a complete specification be ‘supported by’ the matter disclosed in the specification. This provision replaces the previous requirement that the claims of a complete specification be ‘fairly based’ on the matter described in the specification.
Require patent examiners to consider utility and prior use at the examination stage.
Raise the standard of proof to be applied by an examiner for all examination tests to the civil standard (balance of probabilities). Currently, the Commissioner is required to accept a patent application ‘unless it appears practically certain’ or ‘clear’ that the patent would be invalid.
Permit re-examination of a patent application on any ground of invalidity, rather than just novelty and obviousness.
Allow an exemption to patent infringement for activities undertaken for the sole purpose of obtaining regulatory approval. Currently this exemption only applies for pharmaceutical products.
Exempt experimental activities from patent infringement.
Prevent a patent being deemed invalid merely because the patent was granted to a person who was not entitled to it. The Bill also sets out more efficient mechanisms to amend ownership details on the Register.
Amend the grace period so that use of an invention is not considered to be secret use as long as an application is made within the prescribed time.
Regulate omnibus claims by only allowing reference to a drawing or description in a patent claim when ‘absolutely necessary’.
Simplify the method for sealing a patent, such that entry onto the Register will be deemed sealing (akin to the process in place for trade marks).
Changes to Trade Mark Law
When passed, the law will:
Reinstate the presumption of registrability which will make it easier to obtain registration of a trade mark. The Registrar will assume that a trade mark is capable of distinguishing unless it is proved otherwise.
Reduce delays in the opposition process by amending a number of the current procedures, including to contract timeframes for some milestones.
No longer require the opponent to serve a copy of the notice of opposition on the applicant. Instead, the notice will be served on the applicant by IP Australia (the Australian trade mark office).
Require the applicant to file a notice of intention to defend. If this is not filed, the application will lapse.
No longer allow amendment to a notice of opposition, although the regulations may make provision for limited amendments.
Require the opponent to file a statement of particulars on the grounds on which they intend to oppose the trade mark within one month of the notice of opposition. The particulars must include material facts in support of the grounds – and hence are intended to avoid opponents simply listing every ground. If the opponent does not comply with this requirement the Registrar may dismiss the opposition.
Require a party to file a statement of particulars of the grounds on which they intend to seek removal of a trade mark for non-use within one month of the removal notice. The same scheme for removal applications will apply as for opposition applications.
Address weaknesses in enforcement mechanisms for trade mark and copyright infringement, in particular infringement by counterfeit goods.
Allow a trade mark owner that lodges an objection to obtain additional information from the CEO of Customs including information about the exporters and consignors of counterfeit goods and access to multiple samples of seized goods, rather than just one copy.
Impose harsher penalties designed to deter counterfeiting. Penalties will be increased for falsifying or removing a registered trade mark; falsely applying a registered trade mark; making a die, block or other instrument in use that constitutes a trade marks offence, and for selling, exposing for sale, possessing for trade or importing for trade, goods with false trade marks.
Create new summary offences for drawing, or programming a device to draw, a registered trade mark if it is likely to be used for an offence; and possessing or disposing of a die, block, machine, instrument, computer, device or representation of a registered trade mark that is likely to be used for an offence.
Grant courts discretion to award additional damages for trade mark infringement if the court considers that these are appropriate.