Raising the Bar takes effect in Australia
Australia’s Intellectual Property Laws Amendment Act, commonly known as the ‘Raising the Bar’ Act, came into full effect on Monday.
Hailed as the most significant change to Australian IP law since the 1990 Patents Act, Raising the Bar is hoped to improve the quality of granted patents by bringing Australian examinations in line with international standards.
It will allow free access to patented inventions for research purposes and regulatory research, so researchers can work without infringing other patents.
The act aims to speed up and simplify resolution of patent and trademark applications and improve IP enforcement by increasing the penalties for trademark infringement and cracking down on counterfeit imports at the border.
“These changes are designed to make the IP system easier to use in a global setting,” a statement on the Australian government website said.
Ray Tettman, a principal at Watermark Intellectual Property Lawyers in Melbourne, said that the Raising the Bar Act will most affect small Australian businesses that file patent applications exclusively in Australia and seek IP protection at minimal cost.
He said the change to the test for inventive step so that it involves consideration of ‘common general knowledge’ from skilled persons anywhere in the world, as opposed to just Australia, is significant:
“The requirement that prior art be ‘ascertained, understood and regarded as relevant’ has been abolished, thus broadening the range of documents that can be considered when assessing inventive step. These changes mean that it will now be harder to demonstrate an inventive step exists and accordingly the level of inventiveness required for a patent has increased,” he said.
“The level of disclosure required in a patent specification has increased to allow the person skilled in the art to produce the invention across the full scope of each claim. Previously, the law required that the person skilled in the art should be able to produce just one embodiment within the scope of the claim.”
He said the Australian IP office is prepared for the Act, though notes a large number of new patent applications and examination requests filed up to April 14.
“I suspect it will take several years for the Patent Office to catch up with the examination backlog,” he said, adding that the changes will apply to any new or existing patent applications where the examination has not yet been requested.
“As such, it is now too late to take action to avoid the higher inventiveness and disclosure requirements,” he said.
“Due to the huge examination backlog over the next few years, however, any business seeking to gain early grant of a patent in Australia will need to consider requesting expedited examination or consider ‘dividing out’ an innovation patent to gain early enforceable rights.”
