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By April 22, 2012IP Insights

Raising Patentability Standards in Australia – Changes to Australian Patent Legislation

These changes may affect your client’s patent protection in Australia!


The Intellectual Property Laws Amendment (Raising the Bar) Act has passed into law. Some changes will apply immediately, while others will come into effect on 15 April 2013.

New Provisions Taking Immediate Effect

Experimental Use Exemption
An experimental use exemption to infringement has been introduced. This exemption applies to acts carried out in Australia for experimental purposes relating to the subject matter of the invention.

Regulatory Exemption
Previous patent provisions included an exemption to infringement for activities undertaken solely for the purpose of gaining regulatory approval to market or manufacture a patented pharmaceutical. This exemption has now been extended to all technologies and not just pharmaceuticals. These changes are in recognition that other technologies may also suffer delays in bringing products to market because of regulatory approval requirements.

New Provisions Taking Effect on 15 April 2013

Inventive Step
Inventive step was previously assessed against common general knowledge as it exists in Australia. This limitation will be removed so that common general knowledge is extended to include common general knowledge anywhere in the world. The prior art base will be expanded so that prior art will also no longer be restricted to art that is “ascertained, understood and regarded as relevant” by a skilled person.

It will be necessary to support utility by disclosing a “specific, substantial and creditable” use for the claimed invention. The specific, substantial and credible use test is not intended to displace the existing Australian case law on usefulness. An invention must have both a specific, substantial and credible use that is disclosed in the patent specification and the invention must achieve the promised benefit.

The specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by the skilled person. The subject matter of the claims should be enabled over the entire width. The best mode should also be disclosed. A provisional application should meet the same level of disclosure as a complete application.

Fair Basis
The former requirement for a claim to be fairly based on matter disclosed in the specification will be replaced by a support requirement. Each claim must have basis in the description. In addition the scope of the claims must not be broader than is justified by disclosure in the specification. The support requirement will also apply in consideration of priority entitlement. A claim will be entitled to a priority date of a provisional application or other basic application if the subject matter of the claim is supported by that earlier application.

Modified Examination
Modified examination of an Australian patent application based on a granted corresponding patent in prescribed country will no longer be available under the new legislation.

Deferment of Acceptance
The Commissioner will have discretion to refuse a request for deferment of acceptance.

Divisional Applications
The deadline for filing divisional applications will be restricted to three months after publication of acceptance.

Privilege presently afforded between patent and Trade Mark attorneys and their clients will be extended to include communications with foreign patent and Trade Marks attorneys.

Action Before the Commencement of the New Provisions

Patent applications will NOT be subject to the raised patentability standards under the new legislation if a request for examination is filed before 15 April 2013.

In order for an unexamined Australian patent application to benefit from the current lower patentability standards we recommend that examination be requested prior to 15 April 2013.

Applicants with pending PCT applications should consider entering the national phase in Australia and filing a request for examination prior to 15 April 2013.

Applicants wishing to file a convention application in Australia should consider filing the application and a request for examination prior to 15 April 2013.

Where there is an intention or a need to file a divisional application, consideration should be given to filing a divisional application and requesting examination prior to 15 April 2013.

Applicants wishing to request modified examination should file the request prior to 15 April 2013.

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