Australian IP law reform passes in Senate0comments
The majority of amendments from this bill are to the Patents Act 1990, but the reforms will also affect the Trade Marks Act 1995, Copyright Act 1968, Designs Act 2003 and Plant Breeders’ Rights Act 1994.
The aim of the patent reforms is to encourage innovation by supporting investment in research and technology in Australia. It achieves this aim in two ways – by raising the quality of granted patents though an increase of the standards against which patents are registered, and by allowing the use of patents without licence for experimental purposes and regulatory approval.
The remainder of the reforms concentrate on removing procedural hurdles, reducing delay and improving the efficiency of granting patents, trade marks, designs and plant breeders’ rights, running opposition and infringement proceedings.
Some of the most significant reforms to come out of the bill are summarised below:
Raising the threshold of the “inventive step” test for patents
To obtain patent protection, an invention must be inventive or not obvious to another skilled person in the same area of technology. IP Australia will assess the inventive step of an invention against the common general knowledge in the art in Australia only. This has been expanded by removing the requirement from the Patents Act that knowledge considered must be “information that a skilled person… be reasonably expected to have ascertained, understood, regarded as relevant”. The territorial limitation of considering knowledge as it exists only in Australia has also been removed.
These changes will increase the scope of common general knowledge that can be considered when determining if a patent possesses an inventive step.
Level of disclosure for patent applications
The level of disclosure for a provisional application will increase. Both the provisional and complete specification must “disclose the invention in a manner which is clear enough and complete enough for an invention to be performed by a person skilled in the relevant art”. However, the provisional application does not need to disclose the best method of performing the invention.
The wording of the current requirement that a claim in a complete application must be “fairly based on the description” will be replaced with “supported by the matter disclosed”. According to the explanatory memorandum for the bill, the amended clause should pick up two concepts when determining if the claims of an invention are valid: there must be a basis in the description for each claim and the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.
In addition, the support requirement will also apply when an inventor attempts to rely on the priority date of an earlier-filed application. The provisional application’s subject matter must support the complete application in order to keep the earlier priority date.
Evidence standard for patent applications
Currently, patents are accepted by IP Australia unless it “appears practically certain or clear that the patent would be invalid”. According to the explanatory memorandum on the reforms, this low standard has resulted in IP Australia accepting borderline invalid and “poor quality” patents which are later vulnerable to revocation by the courts.
The reforms will change the standard of evidence for all statutory requirements for patent registration to be on the balance of probabilities. This is likely to increase the threshold on which patents are registered on all eligibility grounds. This standard will also apply in re-examination and opposition proceedings.
Exceptions to patent infringement
The reforms will allow researchers to use patentable inventions, without permission of the inventor, for experimental purposes without fear of infringement allegations. This reform clarifies the long-standing assumption of a common law experimental use exemption to patent infringement. The amendments will allow a researcher to:
- determine the properties of the invention
- determine the scope of the claim relating to the invention
- improve or modifying the invention
- determine the validity of the patent or of a claim relating to the invention
- determine whether the patent has been, or would be, infringed by the doing of an act
The introduction of a ‘utility’ requirement will require complete patent specifications to disclose the “specific, substantial and credible use” for the invention. IP Australia examiners will be able to consider the utility requirement when determining whether the invention is useful.
Communications between patent and trade mark attorneys and their clients will be privileged and confidential, similarly to how client-lawyer communications are privileged.
Anti-Counterfeiting and Customs
Under the current provisions of the Copyright Act and Trade Marks Act, an IP owner (the objector) can lodge a “Notice of Objection” with Australian Customs to seize any goods that are imported into Australia which infringe on their IP rights, before they enter the marketplace. Once a Notice of Objection has been lodged and Customs becomes aware of a shipment of goods that it suspects are not genuine and intended for commercial purposes, it will seize and hold the goods for up to 10 days. A “Notice of Seizure” is then sent to the objector and importer. The objector must commence legal proceedings against the importer or the goods are released.
Customs is unable to provide any information to an objector about the exporter/consignor of goods seized at Australian borders which infringe on IP rights of the objector. This limitation leaves copyright/trade mark owners without an easy method of addressing counterfeiting at its source or identifying offenders. The amendments will allow Customs to disclose personal information of importers of seized goods to IP owners.
The reforms also introduce a new scheme where an importer can only reclaim seized goods by providing the objector with information necessary to identify and contact them. This ensures that importers are not able to reclaim their goods without giving the objector information that will assist the objector in determining whether to issue infringement proceedings.
Criminal and civil penalties for counterfeiters under the Trade Marks Act have been increased and are in line with penalties under the Copyright Act after criticism that they were too low to deter infringement. Back to the top