We draw your attention to the fact that a number of changes to the AU Patent System are presently under consideration.
The draft Bill can be viewed here: http://www.ipaustralia.gov.au/pdfs/news/ip_laws_exposure_draft_bill.pdf
A summary of what we consider to be the most significant proposed changes can be found below.
Prior Art Base for Inventive Step
At present, in order to be eligible as prior art for inventive step considerations, the prior art reference must be one which would have been reasonably “ascertained, understood and regarded as relevant” by the skilled person. This requirement filters out some prior art references. This requirement will be removed. Consequently, all prior art references will be eligible for inventive step considerations.
Preliminary Search & Opinion
At present, search and substantive examination is combined. A preliminary search and opinion system will be introduced. This will be similar to EP. We are concerned that the APO may also attempt to introduce a deadline for the filing of divisional applications calculated from the date of the issuance of the preliminary search and opinion.
Exam & Re-Exam Based on Prior Use
At present, the APO conducts exam and re-exam based only on documentary prior art. Non-documentary prior art (e.g. public demonstration or sale) is not considered by the APO in exam and re-exam. The APO will be able to consider non-documentary prior art during exam and re-exam.
Experimental Use Exception
At present, there is no statutory experimental use exception to infringement. An experimental use exception will be introduced.
Omnibus Claims
At present, omnibus claims (e.g. Apparatus substantially as herein described) are permitted. Omnibus claims will no longer be permitted.
Modified Exam & Deferment of Exam Deadline At present, it is permissible to seek a 9 month extension of the initial deadline for requesting exam. Further, when requesting exam, it is possible to request either normal exam or modified exam (the latter being an abbreviated exam based on an issued foreign patent – US, EP, NZ, CA). Deferral of the exam deadline will no longer be possible. Modified exam will no longer be available.
Finally, we mention that there is also a separate draft Bill in circulation which proposes to restrict the patentability of biological materials. This other Bill is highly contentious and the proposed wording of the exclusion is being negotiated.
Regards, Bill
PIZZEYS
bbennett@pizzeys.com.au
