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“Raising the Bar” Patent Reform Summary

Posted on Wednesday, 14th September, 2011 at 7:35am

PART 1 – RAISING THE QUALITY OF GRANTED PATENTS

SUBSTANTIVE MATTERS

Inventive Step (Obviousness) and Innovative Step

Common General Knowledge

Under the current legislation, when assessing inventive step or obviousness the common general knowledge in the art that may be taken into account is that in Australia only. It is proposed to remove this geographical restriction such that common general knowledge, whether in Australia or not, will be relevant.

Ascertained, Understood and Regarded as Relevant

The current restriction that only prior art information that would be “ascertained, understood and regarded as relevant” by a person skilled in the art will be removed under the proposed amendments. As such, any prior art information will be available for the consideration of inventive step or obviousness.

Innovative Step

In terms of innovative step for innovation patents in Australia, the same broadening of common general knowledge will apply.

Usefulness

The proposed amendment requires that the complete specification discloses a “specific, substantial and credible use for the invention” in order for the invention to be considered useful. In the explanatory notes to the exposure draft, the interpretation of the terms “specific”, “substantial” and “credible” is said to be taken from decisions of the US Courts. Particularly, that the invention can provide a well defined and particular benefit to the public, the claimed invention does not require further research to identify or reasonably confirm a “real world use”, and there is no evidence to suggest that the invention is inoperative or reason to doubt the objective truth of the statements in the specification.

Provisional Patent Specifications

Under the current legislation, a specification filed in respect of a provisional application in Australia need only “describe” the invention, whereas a specification filed in respect of a complete application (i.e. non-provisional application) must “describe the invention fully”. The proposed amendments aim to align the descriptive requirement for a provisional specification with that of a complete specification, with the exception of the requirement to include a best method of performance (i.e. best mode). More particularly, provisional specifications will require enabling disclosure of the invention.

Describing the Invention Fully

Currently, it is only necessary to provide an example that falls within the scope of the claimed invention under Australian law. The proposed amendments aim to align the disclosure requirement in Australia with that applying in other jurisdictions by requiring the applicant to “disclose the invention, in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art”. The explanatory notes propose that this is aimed at ensuring that sufficient information is provided to enable the claimed invention across the full scope of each claim.

Fair Basis (Support)

The requirement of “fair basis” has always been a topic of interest for those practising outside of Australia. The proposed amendments replace the requirement for “fair basis” with that of “support”. Being closely related to the immediately preceding point, the aim is to ensure that there is basis in the description for each claim and that the scope of the claims be no broader than that justified by the extent of the description, drawings and contribution to the art.

A similar amendment is proposed in respect of the priority date or dates applied to the claims. That is, the proposed amendments will apply a priority date at which each claim is “supported by” the matter disclosed in an earlier prescribed document (i.e. priority filing).

PRACTICAL MATTERS

Preliminary Search and Opinion

The proposed amendments allow for the Commissioner to conduct a preliminary search and examination, somewhat like that conducted under the PCT, in circumstances where an earlier report is unlikely to have been made available from a major equivalent patent office. Specifically, this provision will apply in circumstances where the applicant has only proceeded in Australia. It is intended that the applicant may make submissions and amendments in response to the preliminary report, but these will only be considered if the application proceeds to full examination at a later date.

Examination of Standard Patents

The patentability requirements considered during examination will be expanded under the proposed amendments. This includes:

Standard of Proof

Currently, it is accepted that the Commissioner must accept a lower standard of proof than that which would be required by a court. That is, the Commissioner must accept a patent application “unless it appears practically certain” or “clear” that it would be invalid. Under the proposed amendments, the standard of proof at acceptance of standard applications, during opposition proceedings and after re-examination will move closer to that required by the courts. That is, the Commissioner may accept a patent application if reasonably satisfied that the prescribed requirements are met. If not satisfied, the application may be refused.

Re-examination

The proposed amendments expand the grounds available under re-examination of a standard patent application or granted patent. Currently, the Commissioner may only consider questions of novelty and inventive or innovative step. Under the proposed amendments, the Commissioner may also consider usefulness, whether the invention is a manner of manufacture and whether the specification adequately discloses and supports the claimed invention. Prior use will also be available in accordance with examination discussed above.

Allowability of Amendments

The present legislation allows for any amendment so long as the amendment does not introduce a claim to matter not in substance disclosed in the specification as filed. Post acceptance, the additional requirement of amendments not broadening the scope of the claims applies. The current provisions therefore allow for the introduction of additional description, for example in circumstances where an inadequate description has been originally filed. The proposed amendments aim to prevent amendment of a complete specification after filing to add new matter. That is, one will not be able to add matter to a specification after filing in order to overcome issues of inadequate description.

PART 2 – FREE ACCESS TO PATENTED INVENTIONS FOR REGULATORY APPROVALS AND RESEARCH

Two amendments are proposed which aim to give researchers greater certainty about where they have freedom to operate around patented technology.

Acts for Obtaining Regulatory Approval

This issue was first addressed with regard to pharmaceutical patents under Section 119A. That exemption provides that rights are not infringed by a person exploiting an invention claimed in a patent if the exploitation is solely for purposes connected with obtaining the inclusion in the Australian Register of Therapeutic of Goods, or for obtaining similar regulatory approval under a law of a foreign country, of goods that are intended for therapeutic use (but excluding medical devices or therapeutic devices).

The proposed new provision, Section 119B, aims to extend the regulatory approval exemption to all technologies. Again, the exemption applies only to activities undertaken solely for purposes connected with obtaining regulatory approval of goods under Australian law or under a law of a foreign country, or both. The exemption is not intended to include stock-piling of the patented product for sale upon expiry of the patent, or manufacture of the product for export to another country.

Acts for Experimental Purposes

Currently, there is no exemption under the Australian legislation from infringement for research and experimental activities in Australia although it has been argued that some form of implicit experimental use exemption exists. The proposed new provision, Section 119C, explicitly introduces this exemption. The exemption should apply to tests, trials and procedures that a researcher or follow-on innovator undertakes as part of discovering new information or testing a principal or supposition. This will include research conducted primarily for the purpose of improving a patented invention. The exemption is not intended to apply to acts primarily concerned with commercialisation of the invention or manufacture of the invention for the purpose of sale or use for commercial purposes. Nor is the exemption intended to include making and using the invention to test the likely commercial demand for a product (i.e. market analysis).

Explicit exemptions in the proposed new provision include:

PART 3 – REDUCING DELAYS IN RESOLVING PATENT (AND TRADE MARK) APPLICATIONS

The proposed amendments seek to implement a number of changes in two specific areas:

Divisional Applications

Under the current legislation, a divisional application may be filed at any time up to grant (sealing) of the parent application, including late in opposition proceedings (bearing in mind that opposition proceedings in Australia are post-acceptance and pre-grant). The proposed amendments restrict the period within which a divisional application can be made. Specifically, divisional applications will only be possible within three months of advertisement of acceptance of the parent application. That is, up to the end of the time within which a Notice of Opposition to grant of a patent application can be filed.

A peculiarity of the Australian legislation as it stands is that one may file a patent application without claiming divisional status and later amend the application to include the claim to divisional status. Therefore, under the current legislation one can file a “stand alone” application within the three month period following advertisement of acceptance and later amend the application to claim divisional status from the parent application. The proposed provisions will resolve this issue by also limiting the time within which an application may be amended to claim divisional status. That is, it is proposed that the time frame for amendment to claim divisional status be restricted to the period that a divisional application could ordinarily be made, or no later than acceptance of the divisional application.

Patent Oppositions

A number of amendments are proposed in respect of patent oppositions.

Amendments directed by the court

Under the current legislation, during an appeal from a decision of the Commissioner the court cannot consider any amendments made by the applicant subsequent to opposition proceedings. The proposed amendments give a court the power to consider and decide upon any amendments proposed by the applicant while an appeal to opposition proceedings is on foot.

Withdrawal of applications during opposition

The proposed amendments extend the Commissioner’s power to include the ability to refuse an applicant’s request for leave to withdraw their opposed patent application. Therefore, contrary to the existing legislation, where the applicant has filed a divisional application claiming the same, or substantially the same, invention as claimed in the opposed parent application, the Commissioner can refuse withdrawal of the opposed application such that the opposition must proceed to resolution.

The Commissioner’s powers during oppositions

Under the current provisions, the Commissioner has the power to summon witnesses, receive evidence or require the production of documents or articles (Section 210). It is currently quite difficult for the Commissioner to refuse a request to summon a witness or require production of documents or articles when requested by one of the parties, regardless of relevance or benefit to the proceedings. That is, the test applied is that the materials sought need only be “on reasonable grounds, arguably relevant to the issues”. Under the new provisions, the threshold test is raised to require that the Commissioner be satisfied that the document or article or oral evidence will be likely to contribute to making the correct decision. As such, the Commissioner may reject requests where it is believed that the material is of limited relevance to the proceedings.

The amendments also aim to resolve some uncertainty and clarify that the Commissioner’s powers can extend to foreign entities where they are parties to proceedings before the Commissioner.

Sanctions for non-compliance

Under the current legislation criminal sanctions apply in respect of non-compliance with an exercise of the Commissioner’s powers. However, such criminal sanctions may be difficult, if not impossible to enforce against a party outside of Australia. The proposed amendments provide for new non-criminal sanctions where a person fails to comply with a requirement made by the Commissioner. These include:

PART 4 – ASSISTING THE OPERATIONS OF THE IP PROFESSION

The majority of the amendments proposed in respect of the IP profession are not particularly noteworthy. For example, these include incorporation of patent and trade mark attorneys (i.e. the ability to practice through a corporate structure), registration of patent attorneys, offences relating to companies that act or describe themselves as patent attorneys, assessing attorney conduct and so on.

Of note, however, this part of the proposed amendments considers attorney-client professional privilege as it applies to Australian patent attorneys and their clients.

Attorney-Client Professional Privilege

Under the present legislation, communications between a client and an Australian patent attorney attract professional privilege. However, communications with foreign attorneys may not attract such privilege. The proposed amendments aim to rectify this issue by extending to patent and trade mark attorneys the same privilege as is extended to the general legal profession. Particularly, the amendments expand the definition of “patent attorney” to include in addition to Australian registered patent attorneys, an individual authorised to do patents work under the law of another country or region. ”Patents work” is defined broadly as work done in relation to patents or patent applications on behalf of someone else for gain. This will include not only persons authorised under the law of a nation or state, but also persons registered under an international treaty (i.e. the European Patent Convention 1973).

PART 5 – TRADE MARK AND COPYRIGHT ENFORCEMENT

Various amendments are proposed in respect of trade mark and copyright enforcement, particularly border protection issues and sanctions for trade mark counterfeiting. As the current paper deals solely with patents, if you have queries in this regard, please let us know.

PART 6 – SIMPLIFYING THE IP SYSTEM

There are a number of important issues raised in this part of the exposure draft. These will be dealt with in turn below.

Grace Period

The proposed amendments include three specific changes in respect of the grace period that applies to information made publicly available or use of the invention prior to filing of a patent application.

Secret Use Inclusion

The extension of the grace period to include secret use of the invention in the twelve months prior to filing of the application is proposed. Under the current legislation, while public use of the invention does fall within the grace period provisions, secret use is excluded and, therefore, any secret use of the invention within the grace period will invalidate any patent subsequently granted. The amendments aim at addressing this absurdity.

Information Made Publically Available

The current legislation makes reference to “information made publicly available, through any publication or use of the invention” as being excluded under the grace period provisions. This will be amended to refer only to “information made publicly available” under the proposed amendments. The intention here is to exclude from consideration, for example, circumstances where the patentee disclosed work that they had done, or a prototype that led directly to their invention during the grace period (i.e. publication or use of information leading to the invention as opposed to publication or use of the invention per se).

Type of Application

The proposed amendments also clarify that the grace period only applies if a complete application is made within twelve months of the first disclosure or use. That is, it has been clarified that filing of a provisional application within the twelve month grace period will not invoke the grace period.

Patent Ownership

Various amendments are proposed in the exposure draft relating to simplification of issues involving ownership of patents and entitlement.

Invalidity

The proposed amendments insert a new provision, Section 22A, that specifies that a patent is not invalid merely because the patent was granted to a person who is not entitled to it. Under the current regime, correcting ownership post-grant can be extremely complicated. Moreover, the courts have generally held that grant of a patent to a person who is not entitled or to some but not all persons who are entitled renders the patent void. This new provision aims at alleviating this issue.

Ownership disputes

The current provisions relating to settling disputes of ownership in respect of patent applications are clarified in the proposed amendments. The current legislation provides Sections 32 and 36 for dealing with settling of disputes in respect of ownership of patent applications. However, historically there has been some confusion as to which section applies in particular circumstances.

The proposed amendments aim to clarify that Section 32 applies where one or more joint applicants wish to resolve an ownership dispute before the Commissioner, and that Section 36 applies where a party other than the patent applicant seeks a declaration from the Commissioner on entitlement.

Section 32 has been further clarified by the explicit statement that the determination may be made whether or not the application has lapsed (previously it was unclear that the Commissioner could make a direction in respect of a lapsed application).

Section 36 has been further clarified to apply up until grant of the application. Finally, a new paragraph has been inserted in Section 36 to give the Commissioner the discretionary power to direct in whose name, or names, the application is to proceed.

Rectification of the Register

A new provision, Section 191A, is proposed to give the Commissioner the power to amend the Register to correct an error or omission or to correct ownership details. Currently, only the courts have the power to rectify details in the Register. This item gives the Commissioner the power to declare who is the correct owner, or owners, of the patent and rectify the Register accordingly.

Omnibus claims

Under the current legislation, omnibus claims are generally allowable under Australian law. The proposed amendments aim to restrict the use of omnibus claims to cases where the invention can only be defined by reference to a specific detail in the specification. That is, omnibus claims will be available only where it is absolutely necessary to concisely and clearly define the invention.

Disregarding Withdrawn, Abandoned or Refused Applications

Currently, the Commissioner may disregard a withdrawn, lapsed or abandoned application filed more than twelve months before the filing of a complete application in Australia on the request of the applicant. Also, such a request is only possible where the earlier application to be disregarded has been filed in the same convention country as the priority application. Under the proposed amendments, applications that have been filed and subsequently withdrawn, abandoned or refused, without being published and without being used as the basis for claiming priority will be automatically disregarded. Also, there will be no requirement that the earlier disregarded application be made in the same convention country as the priority application.

Provision of the Priority Document When Requested

In circumstances where a copy of the priority document is not available for consideration by the Commissioner, the Commissioner may require the filing of a copy of that document. The proposed amendments introduce flexibility to meet this requirement by making the relevant document available through the WIPO Digital Access Service (DAS) or other like facilities. That is, if not already available, the applicant can meet such a request for priority documents by ensuring the documents become available in DAS.

Informing the Commissioner of Search Results

The provisions of Section 45, relating to examination of applications, which previously required patent applicants inform the Commissioner of certain patentability search results will be repealed. As such, there will be no requirement to inform the Commissioner of patentability search results under the proposed legislation.

Modified Examination

In light of the fact that modified examination is now rarely used and that examination in Australia is somewhat streamlined given its dependency on assessments made by foreign patent offices, provisions relating to modified examination will be repealed under the proposed amendments.

Postponing Acceptance

Currently, the Commissioner must postpone acceptance of an application if requested to do so by the applicant. Under the proposed amendments, the Commissioner will have the discretion to disallow a request to postpone acceptance if this is considered to be in the interests of the public. That is, if the Commissioner is aware of a particular interest in early resolution of the application, for example where a third party has requested examination of the application, it is unlikely that the Commissioner will accept a request to postpone acceptance. The proposed amendments also provide the Commissioner with the ability to postpone acceptance, even if the applicant has not requested it. For example, if the Commissioner feels there are circumstances that should be resolved prior to acceptance (e.g. ownership issues).

Revocation of Acceptance (Standard Patents) or Certificate of Examination (Innovation Patents)

The proposed amendments facilitate revocation of acceptance of a standard patent application and revocation of a decision to certify an innovation patent by the Commissioner. Revocation will be on the grounds of administrative errors that may have occurred during the process of accepting the patent application or certifying the innovation patent.

Non-Infringement Declarations

A number of clarifying amendments have been proposed to the existing provisions governing non-infringement declarations. In particular:

SUMMARY

As will be appreciated from the above discussion, the proposed amendments are substantial and relatively broad reaching. While submissions have been put by various bodies, including the Institute of Patent and Trade Mark Attorneys of Australia, in the writer’s opinion it is likely that only minor changes will be made to the current draft of the amendments. In terms of timing, the Bill is being held up to some extent by the gene patenting debate in Australia. Even so, we can expect these amendments to be pushed through within the relatively near future. We will keep you advised of any new information.


ANA releases 11 new case studies on prominent Australian nanotechnology companies

Posted on Monday, 7th March, 2011 at 5:29am

The ANA recently completed a series of case studies on prominent Australian nanotechnology companies. These case studies demonstrate how widely and successfully nanotechnology is currently being incorporated into different Australian industries.

Those companies included in the case study series include:

If you are interested in having a case study promoted on the ANAs website, we encourage you to look at the format and supply information and photos to us. At the ANA we are very proud of the research/industry relationship and are committed to promoting this in any way we can.


ANA announces the release of Nanotechnology: Australian Capability Report Fourth Edition

Posted on Wednesday, 16th February, 2011 at 7:01am

The Australian Nanotechnology Alliance was commissioned in the second half of 2010 by the Department of Innovation, Industry, Science and Research under the National Enabling Technologies Strategy to create the Fourth Edition of Nanotechnology: Australian Capability Report. We are pleased to announce that this report is now available.

Australia is making a name for itself in materials, nanobiotechnology, electronics and photonics, energy and environment and quantum technology. Research outcomes can be applied across a wide range of industries, from agriculture and IT to health and aeronautics.

Australia’s smart, enterprising population, robust R&D infrastructure, supportive government and stringent IP protection make it an attractive location to establish and conduct research activities. Collaboration is a defining feature of the Australian nanotechnology sector. The country’s research institutes and private companies have formed strong alliances to bring products with commercial and social benefits to market quickly.

The Fourth Edition of Nanotechnology: Australian Capability Report contains the most up to date information on the Australian nanotechnology sector currently available. The new directory style of this Edition allows the reader to easily find relevant information, and the Australian Nanotechnology Matrix towards the end of the Report provides a useful summary of all relevant areas for each organisation listed.

The Report maintains the seven categories of the Third Edition, while broadening the scope to include new categories of Government Resources and Consultancy Services. There are over 300 entries for companies, research organisations and Government bodies over nine categories:

pdfA pdf version of this report can be found here. Please contact the Australian Nanotechnology Alliance if you wish to obtain a print version of this report.


ANA's Vice President appointed Head of Science, Australian Synchrotron

Posted on Sunday, 28th June, 2009 at 9:00am

The Australian Nanotechnology Alliance welcomes the announcement of Professor Ian Gentle's appointment of Head of Science at the Australian Synchrotron.

ANA President, Mr Steve Healy said "Ian Gentle is not only an internationally aclaimed scientist in the area of fabrication and characterisation of thin films, he is also recognised as an advocate of encouraging industry/research collaborations."...

pdfFull Media Release.


Nanotechnology enabled products to hit $US3.1 trillion value by 2015

Posted on Saturday, 30th August, 2008 at 3:58am

Leading nanotechnology research agency, Lux Research Inc based in New York, has revised upward their estimated value of nano-enabled goods to be produced by 2015.

From an earlier prediction that the global value of nano-enabled goods of $US2.6 trillion, new research indicates this figure will swell to $US3.1 trillion by 2015. As of 2007 goods incorporating nanotechnology reached $US147 billion.

Interim CEO of the Australian Nanotechnology Alliance (ANA), Ms Carla Gerbo said "Australian manufacturers are also taking advantage of nanotechnology to produce goods which offer unique and or enhanced properties, with the potential that Australian products incorporating nanotechnology could be valued up to $60 billion by 2015, while employing some 125,000".

pdfDownload Full Media Release.