Raising the Bar Bill passes House of Representatives

On 20 March 2012, the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was passed by the House of Representatives, and will enter into force once the royal assent is granted by the Governor General in Council, likely within a week or two.

This brings into law the most wide ranging changes to Patent law in Australia for 20 years, and makes changes to Trade Marks, Designs, Copyright and Plant Breeder's legislation and other legislation as well. The bill was passed with bipartisan support and without amendment.

I have outlined the most important changes in earlier posts: Major Changes to Australian Patent Law is now Imminent!; More on major changes afoot for Australian patent law; and Major changes afoot for Australian Patent Law. Important substantive changes to the inventive step test and prior art base, requiring disclosure of a 'specific, sustainable and credible use', changes to the nexus between a provisional specification and to the support requirement are only a few of the important changes.


When will it come into effect?

Most of the changes will come into force a year after royal assent. However, some important provisions are effective more or less immediately.

The Act creates new, specific patent infringement exemptions for two situations.

First, acts done solely for the purposes of obtaining an approval required under a Commonwealth or State or Territory law, or similar law of another country, are not infringements. This does not apply to pharmaceutical patents, which already have a comparable provision (new S119B).

Second, acts "done for experimental purposes relating to the subject matter of the invention" do not infringe (new S119C). An inclusive definition of such purposes includes determining the properties of the invention, improving or modifying the invention, and various activities relating to determining the scope, validity and infringement of the invention. Importantly, there is no 'academic' or 'non-commercial' criteria here - the exemption specifically applies to an attempt to improve, or indeed disprove, the efficacy of a competing commercial product.

Another area is in effect more or less immediately, by implication. The legislation, in a year plus a few days, will require some new things of a patent specification in Australia:

• That (in order to be considered useful) a specific, substantial and credible use for the invention (so far as claimed) [must be] disclosed in the complete specification, and the disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art (section 7A).
• That the specification 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 (s 40(2)(a)).
• That the claim or claims must be clear and succinct and supported by matter disclosed in the specification (s 40(3)).

These are new requirements in Australian law, although they are familiar requirements in other jurisdictions. What is important is that all new filings, especially provisional applications and complete applications on which a claims to priority may be made, MUST now be drafted to meet these requirements.

We will be working through many of the changes over a series of blogs – but be aware, major change is coming.

by Peter Franke