October 1, 2012

Significant Amendment to Australia’s Patent Law

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

The Australian Patent Law has now been revised and the new Law will have both a substantive as well as a procedural impact1. One of the changes is raising the patentability bar. Some of the revised provisions are already in effect while others, particularly those concerning patentability, will come into effect only on 15 April 2013. It may be to applicants’ benefit to expedite examination of currently pending applications, in order to take advantage of the currently still existing, more liberal patentability provisions.

A review of the Australian patent system that has been carried out over the last decade, eventually culminated in the enactment of new law that revises the patent law and will impact the patent regime in Australia. Overall, the changes are intended to streamline the Australian patent system and bring the law substantively into conformity with patent laws in other countries. The revision includes changes that raise patentability criteria as well as those concerning written description requirements. Another revision provides for the ability to carry out experimental research for patented inventions as well as undertake steps in connection with obtaining regulatory approval of certain products2 Also introduced were procedural changes for reducing delays in the patent procedure and streamlining the process.

The most significant change for patent applicants concerns the criteria for inventive step that an invention would need to meet in order to be considered patentable. Basically, these changes bring the inventive step requirements, which are currently relatively lenient, into line with those of other countries.

Israeli (and other) patent applicants who embark on an international patenting endeavor with the expectation of relatively stringent patentability standards of leading patent offices, such as the USPTO, EPO and others, in mind,

should not encounter special difficulties in meeting new patentability requirements in Australia. However, it can be expected that once the new examination standards come into effect (see below), examiners at the Australian Patent Office may need time to adapt themselves to these new standards which may mean a period of some uncertainty in the outcome of the patenting process in Australia.  

The revised provisions for inventive step will come into effect on 15 April 2013. It will pertain to applications filed on or after said date and to applications where request for examination is filed on or after said date. Under the circumstances, applicants of existing Australian patent applications may be well advised to request examination of their application prior to said date, so that their application will be examined under the current, less stringent criteria.

Although this newsletter is short of discussing all the changes to the Australian Patent Law, an additional change worth noting relates to divisional applications. With the objective of resolving delays in disputes before the Patent Office, the Act imposes strict time limits on the currently prevailing leniency and flexibility of being able to file divisional application(s) at any time prior to patent grant as well as the option of converting status of an application into a divisional of an earlier application or even a patent, which was hitherto possible3.

1 The Intellectual Property Laws Amendment (Raising the Bar) Act 2011.

2 The Australian patent law already had provisions permitting experimental acts for obtaining regulatory approval for patented products. The experimental use exemption has now been broadened to include acts for obtaining regulatory approval for agrochemicals, veterinarian medicines, medical devices, diagnostics and any other non-pharmaceutical products which legally require regulatory approval. This change commenced on 15 April, 2012.

3 The time limit for filing a divisional application has now been set at 3 months from the date of acceptance of an application. This is of particular importance in opposition proceedings where until  recently applicant had the option of filing a divisional application out of the accepted application under opposition, to keep his options open. This Act also abolishes the option of converting the application under opposition into a divisional application of another application, with the hope of benefiting from an earlier priority date of the other application.

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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