Patents Amendments Bill
In Biotech News Issue 3 (12 June 2001) we reported on changes to Australian patent law proposed under the Patents Amendments Bill. This Bill was introduced into Parliament in May 2001, and referred to a Senate Economics Legislation Committee in June. The Majority Report of the Committee recommended that the Bill be passed. It seems likely therefore that there will soon be significant changes to patent law and practice in Australia.
- Extension of the jurisdiction of patent, trade mark and design matters to the Federal Magistrates Service
- Summary from Issue three
Extension of the jurisdiction of patent, trade mark and design matters to the Federal Magistrates Service
The Advisory Council on Intellectual Property (ACIP), an independent body established to provide advice to the Minister for Industry, Science and Resources and IP Australia on matters of policy and administration, has released an Issues Paper to stimulate public discussion on the following topic:
To consider and report on whether some practices and procedures, including administrative procedures, to obtain, defend and enforce intellectual property rights relating to patents, trade marks and designs in Australia are appropriate to be referred to the Federal Magistrates Service.
The Federal Magistrates Service was established to deal with a range of less complex federal disputes that would otherwise go to the Federal Court or Family Court of Australia. It is designed to provide a quicker, cheaper option for litigants and is intended to ease the workload of both the Federal Court and the Family Court. The Federal Magistrates Service has developed procedures which aim to be as streamlined and as user-friendly as possible, reducing delay and cost to litigants.
ACIP has undertaken to circulate this Issues Paper and to consult with and seek input from interested parties. Once this input has been considered ACIP will prepare a report which they expect to submit to Parliamentary Secretary Entsch in late 2001.
ACIP would value comments on the reference and seeks expressions of interest from interested parties indicating whether they wish to take part in consultation sessions or intend providing written submissions (or both).
Summary from Issue three
Patents Amendments Bill 2001
The Federal Government has proposed amendments to the Patents Act. The proposals contained in the Patents Act Amendments Bill 2001 increase the threshold of patentability, and also introduce an obligation to disclose prior art similar to the current US Duty of Disclosure.
Novelty, inventive step and innovative step
The proposed amendments make the tests for novelty, inventive step and innovative step more stringent by broadening the prior art information against which the invention is tested.
Inventions will now be assessed against information made publicly available through doing an act anywhere in the world, no longer just Australia. As a result, Australia will have an absolute novelty test and thus be the same as Europe.
Common general knowledge will also encompass the world rather than be limited to Australia. This means that whether an invention contains an inventive step (or, in the case of innovation patents, an innovative step) will be tested against a person skilled in the art at a global level.
Documents (other than documents comprising the common general knowledge) which are relevant for inventive step will remain limited to those publicly available in Australia. However, it will no longer be necessary to show that the person skilled in the art could be reasonably expected to have ascertained and understood these documents and regarded them as relevant. Further, these documents may now be combined if it would have been obvious to a person skilled in the art to combine the documents. In other words, documents which are not part of the common general knowledge may be mosaiced, and need not be reasonably ascertained, understood and considered relevant by the person skilled in the art.
If passed, these amendments will be effective for patent applications filed after the commencement of these amendments and patents granted on such applications.
Duty to disclose
The amendments will introduce a duty on the applicant to disclose the results of all searches carried out by, or on behalf of, the applicant which relate to any of the following:
- a complete application
- any provisional application with which the complete is associated
- corresponding applications filed outside Australia
Further, an amendment will not be allowable if it is required to overcome a piece of prior art which should have been (but was not) disclosed under this duty.
If passed, this amendment will apply to existing pending applications as well as to newly filed applications.
Standard of proof
The amendments will raise the standard of proof for grant of patents.
The Commissioner will need to be satisfied that the claims are novel and inventive. Currently, the Commissioner must accept the application if she considers that there is no lawful ground of objection to it.
If passed, this amendment will apply to all pending applications as well as to newly filed applications.
Re-examination
The proposals expand the Commissioner's discretion to re-examine before grant. Previously, the Commissioner could only exercise this discretion if an opposition was lodged.
If passed, this amendment will apply to all pending applications as well as to newly filed applications.
Prior use defence to infringement
The amendments attempt to clarify the situations in which a person cannot rely on this defence. This defence excuses an alleged infringer from infringement where (s)he was doing the alleging infringing act before the priority date of the patent.
The alleged infringer will no longer be able to rely on the prior use defence if (s)he derived the invention from the patentee. However there is one exception - the defence will be available if the alleged infringer derived the invention from information made publicly available by the patentee at a gazetted exhibition or learned society.
This means the inventor may render their patent ineffective against competitors who attended the exhibit/society meeting and were able to commence sufficient activity to attract the benefit of the prior use defence. As a result, it will be essential to consider carefully what is disclosed at such exhibits or societies.
If the alleged infringer ceased/abandoned the prior use activities (other than temporarily) before the relevant priority date then they cannot rely on the prior use defence.
This amendment will not be retrospective and will only apply to patents granted on applications filed after the commencement of this amendment.
Extensions of time
The amendment provisions introduce a new ground for seeking an extension of time.
It will be possible to obtain an extension of time if a time period has expired and the Commissioner is satisfied that the person concerned took due care as required in the circumstances to ensure the doing of the act within that time.
This will apply to all s223 applications made after the commencement of the amendment.
