New IP Laws Make Patent Changes

by Michael Koss, Graduate & Wendy Burnett, Special Counsel, Mason Sier Turnbull Lawyers

If you’re considering developing a patent – or if you have one in the pipeline – you need to be aware of recent intellectual property law changes that affect patents. We outline them here and provide a strategy for integrating them into your business.

The Intellectual Property Laws Amendment (raising the bar) Act 2012 became law in April this year. Some provisions were effective immediately, but the majority will come into force on 15 April 2013. Regulations, which will provide much of the operational detail, are still being drafted.

Among other things, the new laws aim to raise the standards required before a patent is granted. The following changes significantly affect patent applications and need careful attention. They will apply to patents filed after 15 April 2013, and to patent applications where prior to that date, a request for examination has not been filed.

Free Access to certain patented inventions

Effective since 15 April 2012, a patent infringement exemption now covers activities that would otherwise infringe a patent, if they are undertaken for the purpose of gaining information required for research or regulatory approval. The exemption, however, only applies to non-pharmaceutical products.

Also exempt are experimental activities related to patented inventions, such as:

• determining the properties of an invention
•  improving or modifying an invention
• testing the patent’s validity, or claims made about the invention

Inventive or Innovative Steps

Under the new laws, patent applications involving inventive or innovative steps will be assessed against the general knowledge both inside and outside the geographical patent area. Currently, the law confines the area within which such patents can be assessed.

The reforms also remove requirements relating to what information can be used to determine whether an invention constitutes an inventive step. Under the new laws, all publically available information at a claimed invention’s priority date will be taken into account.

Usefulness

The reforms will also strengthen the test for usefulness. The intent is to prevent claims of speculative invention, and to ensure inventions do not need additional experimentation before use.

New standard of usefulness will require that a “specific, substantial and credible use for the invention” be disclosed in the patent’s specification. The disclosure must be “sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art”.

Examination Standards

The grounds for examination are also due to be expanded. During opposition and court revocation proceedings, the Commissioner will be able to examine on all the substantive grounds available. The main change is that usefulness and prior use will be considered during the examination of a standard patent application, a standard patent and an innovation patent.

What you can do now

To keep up with these changes, you should consider your IP strategy and whether you can request examination of your pending patents before 15 April 2013.

If you are preparing to lodge an application, but do not anticipate filing for examination before 15 April 2013, you should consider including sufficient information about usefulness in order to satisfy the new requirements.  

For further information on the new reforms and assistance with your intellectual property, please contact Wendy Burnett on 03 8540 0288 or wendy.burnett@mst.com.au