Avoiding More Stringent Examination of Australian Patent Applications

January 2013

The Australian Patents Act will be amended on 15
April 2013.  The changes will affect
Australian patent applications for which examination is requested after this
date.

The changes impose a greater burden on applications in the areas of:

  • Inventive Step;
  • Sufficiency;
  • Support or “Fair Basis”;
  • Utility; and
  • Amendments or "Added Matter"

In addition, there will be a period of 12 months, reduced from the current 21 months, from the date of issuance of the first examination to place an application in order for acceptance.

Under current Australian patent law inventive step is assessed against documents that a skilled person would have reasonably “ascertained, understood and regarded as relevant” and against the background of common general knowledge of persons in Australia.  Under the new law the aforementioned italicised requirements are removed, potentially raising the threshold for inventive step. In addition, applications will be assessed for sufficiency based on a new requirement of the application disclosing the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the relevant art, consistent with a number of other jurisdictions such as Europe.  There are also changes to Australian patent law being introduced which may increase the requirements for support for broad claims in the application, utility of the invention and increased requirements for basis in the application for amendments.

With the above in mind, we suggest that Applicants may wish to request examination of pending Australian patent applications prior to 12 April 2013 in order to be subjected to the current more lenient examination standards.

Please inform your usual contact at HGF if you wish to take advantage of the current examination standard in Australia.

Contributor: Chris Benson

For further advice, please contact your usual HGF representativewith your query or contact Chris Benson at cbenson@hgf.com.