In November 2012 we reported on the detail of some of the changes that are going to come into effect on 15 April 2013 in the examination of Australian patent applications. As these changes are now only two months away, we thought it would be useful to give an ‘in-a-nutshell’ guide to what applicants and potential applicants need to do NOW to give their applications the most favourable future in light of the changes.
To recap: for applications where examination is requested after 15 April 2013, it will be more difficult to get a patent. More stringent conditions will be applied to (among other things) the level of inventiveness in light of the prior art, the level of disclosure of all of the aspects and advantages of the invention in the priority application, and the degree to which the examiner needs to be convinced that the invention is patentable.
The old ‘lower’ standards will apply for the life of your patent if you request examination before that date.
If you have a pending PCT application and you will be entering national phase in Australia:
- Consider entering national phase early in Australia, and requesting examination before 15 April.
If you have a pending Australian complete application:
- Consider voluntarily requesting examination prior to 15 April, regardless of whether a direction to request examination has been issued by IP Australia.
If you have filed a priority application (such as a provisional application) and you have continued development of your invention:
- Don’t wait for the full 12 months from the priority date to file your complete (standard or PCT) application, update your specification to the latest development and file a further priority application.
If you are developing a technology and considering filing a priority application:
- Consider postponing the filing of that application until your technology is more fully understood/trialled so all of the details can be captured; or
- Consider a program of filing multiple priority applications to achieve the earliest priority for each of the aspects of the invention as they are developed.
by Adam Hyland
