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Raising the bar on Australian IP Law

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 is now in full effect. The commencement of the Act is a welcome change for many Australian IP Right holders, and future IP Right holders.

 

To develop these legislative changes we worked with you to improve Australia's intellectual property (IP) laws. The changes affect all IP Rights, they focus on;

  Stronger patents

  Help for researchers 

  Tightening opposition and administrative processes

  Assisting the operations of the IP profession

  Improving enforcement of trade marks and copyright

Simplifying the IP system

 

Since the bill was passed last year we have been getting ready for this change. Updates to our databases and software have been made. Updated forms and manuals of practice and procedure are available.  The Attorney-General's Department, and Australian Customs and Boarder Protection Services have also made changes to implement this legislation.

To help you prepare for these changes we have developed information packs and fact sheets about the major changes.

 

See below for detailed information about the legislation changes, including links to information about the new processes:

Changes to patentability standards

The below changes will apply to complete patent applications made on or after 15 April 2013, standard patents where the request for examination is made on or after 15 April 2013, and innovation patents granted after 15 April 2013:

The specification will be required 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 disclosure required to secure a priority date must be clear enough and complete enough for the invention claimed in the application to be performed by a person skilled in the relevant art. 

Replacement of fair basis with the requirement that the claims are supported by the description. 

The specification will be required to disclose a specific, substantial and credible use for the invention. 

 

Changes to inventive step and innovative step 

The current geographical limitation (Australia only) on common general knowledge will be removed. This means that relevant technical expertise anywhere in the world will constitute common general knowledge. 

The current requirement that prior art documents for inventive step be "ascertained, understood and regarded as relevant" by a person skilled in the art will be removed.

Changes to patent examination 

The 'balance of probabilities' standard will apply for complete patent applications having an examination request on or after 15 April 2013 or complete applications made on or after 15 April 2013. 

Utility and public information arising from doing an act (e.g. prior use) can be considered in examination of those patent applications. 

Modified examination is no longer available. 

If an administrative error occurs, acceptance, certification and allowance of amendments can be revoked. 

Re-examination will include most substantive grounds of examination from 15 April 2013 regardless of when the application was filed or patent granted.

 

Reduced time frames for prosecuting patent applications 

Time to respond to a Direction to Request Examination will be reduced from six (6) months to two (2) months. This will take effect for Directions issued on or after 15 April 2013. 

Time to gain acceptance will reduce from 21 months to 12 months for patent applications having an examination request on or after 15 April 2013, or complete applications made on or after 15 April 2013. 

For Standard Divisional Applications made on or after 15 April 2013 the time for filing will be restricted to within three (3) months of the advertised  acceptance date of the parent patent application. 

Conversion of a Standard Patent Application into a Standard Divisional Application will be restricted to within three (3) months from advertisement of acceptance of the parent Patent Application and no later than acceptance of the Divisional Application.

 

Searches and search fees for patents applications 

A new voluntary product, called the Preliminary Search and Opinion (PSO), will be available for complete Standard Applications filed on or after 15 April 2013. 

The voluntary PSO needs to be requested prior to submitting a Request for Examination. 

PCT Article 15(5) searches will no longer be available for complete applications. 

Where a standard patent application under examination claims an invention which has not previously been searched a new search fee will apply for applications filed on or after 15 April 2013.

 

Statement of Entitlement for patents

The Statement of Entitlement replaces the Notice of Entitlement

The Statement of Entitlement must now be provided at the time of filing a Request for Examination. 

The Statement of Entitlement will include a statement from the inventor and a Statement of Priority.

Patents applications will no longer be 'sealed' 

AusPat (Our online patent search system) now shows accepted and in force patents as 'granted'. 

The Australian Journal of Patents shows the status of 'sealed' for patents granted prior to 15 April 2013. 

The Deed of Letters Patent has been replaced by a Certificate of Grant. This will apply to both standard and innovation patents.

 

Trade mark examination 

Amendments to Section 41 of the Trade Mark Act 1995 - Trade Mark not distinguishing applicant's goods or services - took effect on 15 April 2013.

Removing the concept of 'service' for oppositions 

Parties no longer need to serve evidence and documents upon each other; this will apply to existing and new oppositions for patents, trade marks and designs. 

We will receive and give all documents and evidence submitted by all parties related to opposition cases. 

We will require all opposition evidence and other selected documents to be submitted electronically in an approved form. 

Physical evidence will only be permitted under exceptional circumstances.

 

Trade mark oppositions 

The opposition period is now two (2) months. 

The Notice of Opposition has been separated into two (2) components: 

Notice of Intention to Oppose 

 

The Statement of Grounds and Particulars 

A Notice of Intention to Defend has been introduced for opposition proceedings commenced on or after 15 April 2013. 

A cooling-off period has also been introduced for opposition proceedings commenced on or after 15 April 2013. 

The assessments of reasons for an Extension of Time relating to opposition proceedings are more stringent. 

The period in which to file Evidence in Reply is reduced to two (2) months for opposition proceedings commenced on or after 15 April 2013. 

Provisions and fees relating to Further Evidence do not apply for opposition proceedings commenced on or after 15 April 2013.

 

Patent opposition

The opposition period and procedures have changed for 'procedural' oppositions (including oppositions under s223 and s104) filed on or after 15 April 2013. 

More rigorous Extension of Time requirements apply to evidentiary periods commenced on or after 15 April 2013. 

For oppositions filed on or after 15 April 2013 a Statement of Grounds and Particulars must be accompanied by a copy of each document referred to in the statement. 

A Summary of Submissions must be filed by the opponent at least 10 business days before an oral hearing and the applicant must file a Summary of Submissions at least 5 business days before the hearing for

hearings set on or after 15 April 2013.

 

Incorporation & serious offence notifications 

Companies can now register as patent and trade marks attorneys. 

Incorporated attorneys are required to maintain adequate and appropriate professional indemnity insurance as well as ensure that the company has at least one registered individual attorney Director. 

Incorporated attorneys must have evidence that the company is a registered company under the Corporations Act 2001 (Commonwealth). 

A registered attorney must notify the Designated Manager (the Director General of IP Australia) within 14 days of being charged with a serious offence. 

A serious offence is one that involves obtaining property or a financial advantage by deception or fraudulent conduct and is an indictable offence against the law of the Commonwealth, a State or a Territory (or similar offence overseas). 

After being notified of the charge of a serious offence, the Designated Manager may, by written notice, suspend the registered attorney's registration.

(Source: IP Austrilia)

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