Changes raise the bar for patentability but tougher standards can be avoided

The Australian Government has now issued details of significant changes to the intellectual property regime in Australia. These include changes to raise the quality of granted patents, improve access to patented inventions for research and regulatory purposes, tighten up divisional practice, increase consistency between the Patent Office and the Courts, and improve legal privilege for foreign applicants, among others.

The changes to the standard of patentability will have significant and lasting impact upon applicants. It has generally been accepted that the standard of patentability in Australia has not advanced in step with its major trading partners and as a consequence, it is now too easy to obtain patent protection in Australia. A summary of the changes made in an attempt to address this are as follows:

  1. The changes will remove restrictions on the information and background knowledge taken into account when assessing inventive step. Currently, prior art used for the purposes of assessing the inventive step must be ‘ascertained, understood and regarded as relevant’ by a skilled person in the art. It will now only be necessary that a skilled person would understand and regard the prior art as relevant. The requirement that a document be ascertained, or located by a skilled person, will be removed, widening the prior art base considerably. Further, the assessment of the “common general knowledge” of an ordinary skilled worker in the art will no longer be restricted to Australia, but will be assessed against an undefined but apparently more international standard of “common general knowledge”.
  2. The changes will bolster the requirement that the specification adequately explains how the invention works. From now on a ‘specific, substantial and credible’ use will need to be demonstrated in the specification.
  3. The changes will now require that a claim is enabled across its whole scope, as compared to the present situation where it is merely necessary to enable something within the scope of the claims.
  4. The peculiar Australian requirement that the claims are ‘fairly based’ on the description will be replaced with a more generic requirement that the claims find ‘support’ in the specification. The support requirement would be similar to that in other jurisdictions.
  5. The changes also expand the grounds that can be considered during examination, to make them more consistent with the grounds available to the Courts. For example, during examination, it will become possible to consider prior use of an invention. All aspects of examination will be considered under a “balance of probabilities” test, rather than giving the applicant the benefit of the doubt.
  6. Very significantly, the transitional provisions as they are currently set out will mean that the old lower patentability standard will be applied to applications where examination has been requested at the commencement date of the changes, whereas the new, tougher standard will be applied to those cases where examination is not requested at commencement date of the changes. Of the utmost importance is the fact that the standard that applies at the commencement date of the changes will apply to that particular case for the life of the patent. Not only will cases under the old regime have an easier standard of examination than those under the new regime, they will be harder to invalidate over their lifetime.

Fortunately, there is a fixed period of 12 months from the date the changes pass into law (yet to be advised) until the time they commence.

Applicants wishing to enjoy the lower standard of patentability, and thus stronger validity over the life of the patent should ensure they bring forward examination requests, once the commencement date is known. It may even be worthwhile to consider bringing forward PCT national phase and Paris Convention filings so that examination can be requested in time.