Tuesday, February 19, 2013

Australian patent law raises the bar

Tuesday, February 19, 2013
In Australia, the Intellectual Property Laws Amendment (Raising the Bar) Act of 2012 will come into force on April 15, 2013.  This new Act raises the requirements for patentability among other things.  Notable among the changes is the introduction of a US-style utility requirement and a European-style sufficiency requirement.  The Act also broadens the scope of the prior art that Australian examiners will consider.

As a result, the Raising the Bar Act will have the effect of making the examination of Australian patent applications more rigorous and leading to more rejections. The Act will apply to applications filed on or after April 15, 2013, as well as applications for which the examination request is filed on or after April 15, 2013.

In order to take advantage of the current more lenient requirements, we recommend requesting examination for pending applications before the coming-into-effect date of April 15, 2013. Applicants can also avoid the more restrictive requirements of the new Act by filing before April 15, 2013 any national phase applications in Australia which would otherwise become due after this date and by submitting the examination request at the time of filing.

In addition, applicants may want to consider amending their applications before April 15, 2013 to ensure the application will meet the new patentability requirements, since after April 15, 2013, new material may not be added to the application.

Another change is the reduction of the acceptance period from 21 months to 12 months from the first Office Action. If the application is not in condition for acceptance by the end of the acceptance period, under the new Act the applicant can no longer re-file the application as a divisional of itself in order to continue its pendency.  This is the more reason why either the examination request or the necessary amendments should be filed before April 15, 2013. 

This article summarizes only some of the changes that have been introduced; there are additional developments that we have not addressed. You should seek qualified professional advice before applying this information to your own circumstances.

By: Nazanin Ghaissarnia