The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into force on 15 April 2013. The following provides a summary of the main changes to examination.

Topic

Application

Acceptance Period

Acceptance period reduced from 21 months to 12 months.

Response fees no longer payable.

Applies to standard patent applications with an examination request filed on or after 15 April 2013.

Amendments

Amendment of a complete specification is not allowable if the amended specification claims or discloses matter extending beyond that disclosed in the complete specification as filed and other prescribed documents.

Applies to:

requests to amend filed, or deemed under reg 10.6A to be filed, on or after 15 April 2013, for standard patent applications where a request for examination was not filed before 15 April 2013, and standard patents granted on such applications.
requests to amend filed on or after 15 April 2013 for innovation patent applications, and innovation patents where a request for examination was not filed before 15 April 2013, or the Commissioner had not decided before 15 April 2013 to examine the patent.

Amendment of an abstract is not allowable.

Amendment of a patent request to convert an application to a divisional is not allowable after the application has been accepted.

Amendment of a patent request to convert an application to a divisional is not allowable if the period in which the application could have been filed as a divisional application under ‘new’ sec 79B has expired.

Balance of Probabilities

Test applies to all grounds of examination.

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.

Clear Enough and Complete Enough Disclosure

Complete specification must 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 art.

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.

Direction to Request Examination

Period for requesting examination following direction reduced from 6 months to 2 months.

Applies to directions issued on or after 15 April 2013.

Divisionals

Divisional application under sec 79B must be filed no later than 3 months from the date of advertisement of acceptance of the parent application.

(See also Amendments for amendment of a patent request to convert an application to a divisional).

Applies to divisional applications filed on or after 15 April 2013.

Grace Period

Grace period applies to any information made publicly available.

Provisions of sec 24(1) only apply where a complete application is filed in the prescribed period.

Applies to information made publicly available on or after 15 April 2013.

Inventive/Innovative Step

Common general knowledge no longer restricted to that in Australia.

Inventive step: removal of the requirement that prior art documents be ‘ascertained, understood and regarded as relevant.’

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.

Modified Examination

Repeal of provisions allowing for modified examination and deferment of examination.

Requests for modified examination made before 15 April 2013 proceed under the ‘old’ modified examination provisions.

Requests for modified examination cannot be filed on or after 15 April 2013.

National Phase Applications

PCT application must meet the requirements of a formalities check otherwise it may lapse.

Applies to PCT applications that enter the national phase on or after 15 April 2013.

Notice of Entitlement

Notice of entitlement to grant and to claim priority must be included as part of the request for examination.

Where there is a change of applicant, a new notice of entitlement is required, unless the change is supported by evidence, e.g. sec 113.

Applies to requests for examination for standard patents filed on or after 15 April 2013.

Applies to notices examined on or after 15 April 2013.

Omnibus Claims

Claims must not rely on references to the description or drawings unless absolutely necessary to define the invention.

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.

Postponement of Acceptance

Commissioner may postpone acceptance even if the applicant has not requested it.

Applies to requests for postponement filed on or after 15 April 2013.

Preliminary Search and Opinion (PSO)

PSO may be conducted on a complete application for a standard patent.

Applies to complete applications for standard patents filed on or after 15 April 2013.

Prior Use

Prior use (doing of an act) may be considered for novelty and inventive/innovative step purposes.

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.

Priority Dates

In order to secure a priority date, a priority document must disclose the claimed invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art.

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.

Re-Examination

Expanded grounds are available for consideration.

Prior use (doing of an act) may be considered for novelty and inventive/innovative step purposes.

Applies to re-examination reports issued on or after 15 April 2013.

Revocation of Acceptance

Acceptance of a standard patent application may be revoked in exceptional circumstances.

Applies to standard patent applications accepted on or after 15 April 2013.

Revocation of Certification

Certification of an innovation patent may be revoked in exceptional circumstances.

Applies to innovation patents certified on or after 15 April 2013.

Revocation of Leave to Amend

Leave to amend may be revoked in exceptional circumstances.

Applies to standard patent applications accepted, and innovation patents certified, on or after 15 April 2013.

Section 112A

Amendments to a patent application cannot be allowed where there are relevant proceedings pending.

Applies to all amendment requests that have not been dealt with by the Commissioner before 15 April 2013.

Support

Claims must be supported by matter disclosed in the specification.

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.

Usefulness

Specification must describe a use that is specific, substantial and credible.

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.

Whole of Contents

Whole of contents citations include documents published on the priority date of the claims under consideration.

Only information contained in the document at its filing date is taken into account.

Applies to standard patent applications and innovation patents with an examination request filed on or after 15 April 2013.