As previously reported, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was enacted on 15 April 2012. One of the most significant and publicised changes concerned the inventive step test.
The inventive step test revolves around a hypothetical person skilled in the relevant art to an invention under scrutiny. If this person would have considered the claimed invention to have been obvious as at the claim's priority date then the claim in question fails the inventive step test.
The question of obviousness is effectively based upon two sources of information, that being common general knowledge and prior art information (or a combination of common general knowledge and prior art information).
Common General Knowledge
Prior to the recent changes, the common general knowledge was restricted to that as it existed in the patent area (which effectively meant Australia). The changes have now removed this jurisdictional limitation. Hence, the test now allows consideration of a conceptually global common general knowledge.
Prior Art Information
Prior art information includes documents made publicly available (anywhere in the world) and information made publicly available through an act (anywhere in the world). In assessing inventive step, the skilled person is allowed to consider a single piece of prior art information or a combination of pieces of prior art information (if the skilled person could have been reasonably expected to make the combination).
Prior to the recent changes, there were restrictions upon the applicability of each piece of prior art information. In effect, each piece of prior art information needed to satisfy the requirement that the skilled person could reasonably have been expected to have ascertained, understood and regarded as relevant the prior art information as at the priority date. The changes have now removed these restrictions. In effect, if something is prior art, it is applicable.
Ramifications
While the changes to inventive step have, in essence, raised the threshold bar; the changes have also, in fact, simplified the inventive step question in a more practical sense. The benefits of this simplification will probably become more apparent in cases where the validity of a claim is challenged in oppositions and judicial proceedings. Wrangles over what prior art information can or cannot be considered may become a thing of the past. Furthermore, the admissibility or relevance of evidence from overseas experts will become uncontroversial.
The changes have moved the inventive step question closer in line with other major patent jurisdictions. Whether this means a claim passing inventive step scrutiny by IP Australia will give better weight when the claim is assessed in other jurisdictions will remain to be seen. However, it's nice to be optimistic.
Coming Into Effect
The relevant changes will come into effect on 15 April 2013. However, the manner in which the changes take effect requires careful consideration.
The new inventive step test will be applicable to all Australian patents and patent applications in which a request for examination is filed on or after 15 April 2013.
As a consequence, the new inventive step test can have a retrospective effect on existing pending Australian patent applications, unless a request for examination is filed by 14 April 2013. On the flip side, future Australian patent applications which are filed on or before 14 April 2013 AND have examination requested by 14 April 2013 will retain the application of the lower threshold inventive step test.
While, under Australian practice, examination must be requested within certain deadlines (i.e. within 5 years of filing or 6 months from being directed to do so), examination can be requested voluntarily at any time. Hence, if the change in inventive step test raises any cause for concern, it may be worth considering voluntarily requesting examination before 14 April 2013.
On a similar note, anybody considering filing an Australian patent application in the future (whether as an application claiming priority from an overseas application or a national phase from a PCT application) may want to think seriously about doing so earlier than planned and also requesting examination.
by Simon Ellis
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