Patent law reform update (Raising the Bar Bill)

22 September 2011 | By Odette Gourley (Partner)

Reforms to Australia’s patent laws are included in the Raising the Bar Bill recently introduced into Federal Parliament.  If implemented, the reforms will be significant. They aim to make patents harder to get but stronger when granted.

In practice, Australia’s patent law would be less “patent friendly”:

1.   Inventive Step/Obviousness

It will be easier to invalidate a patent on the ground of lack of inventiveness because:

  • Inventiveness will be assessed against a prior art base of common general knowledge that may include information available anywhere in the world not just Australia; and
  • The requirement will be removed that prior art be able to be “ascertained, understood and regarded as relevant”.  Where it is sought to rely on one or more pieces of prior art together, it will still be necessary to show that the skilled addressee could have been expected to combine them.

2.    Sufficiency

It will be easier to invalidate a patent on the ground of insufficient description.  Currently, an invention is “fully” described if the applicant discloses enough in the specification to enable something to be produced within each claim without new invention.  In contrast, the Bill proposes that the invention be disclosed “in a manner which is clear enough and complete enough for the invention to be performed” by the skilled person.

The Explanatory Memorandum (EM) explains that the effect of this is that sufficient information must be provided to enable the whole width of the invention, as claimed in each claim, to be performed by the skilled person without undue burden or the need for further invention.

3.   Fair Basis

The current “fair basis” requirement would be replaced with a “support” requirement.  Currently, a claim is fairly based where there is consistency between what is claimed and what the body of the specification, read as a whole, discloses as the invention.  According to the EM, the term “support” picks up two concepts: that there must be a basis in the description for each claim, and that the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.

The intention behind this amendment is to align the requirements between Australia and other jurisdictions because, despite the similarity in the underlying concept and policy between fair basis and support, the different terminology has produced differences in the substantive law.

4.   Utility

The reforms would bolster the utility requirement by requiring that the specification disclose a “specific, substantial and credible use”.  According to the EM, an invention must satisfy this new test and meet the requirements of existing case law (broadly that the invention must achieve the promised benefit).  This, the EM states, will prevent the speculative claiming of inventions that would require further experimental effort before they could be put into practice.

5.   Examination

Currently, patent applications are examined for sufficiency, fair basis, manner of manufacture, novelty and inventive step.  The Bill would require usefulness and prior use to be considered during examination and would expand the grounds for re-examination of standard patents to include all the substantive grounds considered during examination.

6.   Standard of proof

The Bill will apply a consistent standard of proof, on the balance of probabilities, so that the Commissioner is not obliged to grant patents which would not pass scrutiny in a court challenge, whereas currently, any doubt is usually resolved in favour of the applicant.

7.   Infringement Exemptions

The Bill introduces a codified infringement exemption for research and experimental activities; and also expands the regulatory preparations infringement defence to patents in all fields, not just pharmaceutical patents. 

The Bill follows earlier public consultations on IP rights reforms with the changes generally designed to achieve Australian standards for patentability that are internationally consistent.

Like all reforms, there would be a period of uncertainty while the courts clarify whether the reforms have their intended effect.

Currently, debate on the Bill is adjourned following its second reading speech in the Senate. We are monitoring developments.

The content of this publication is for reference purposes only. It is current at the date of publication. This content does not constitute legal advice and should not be relied upon as such. Legal advice about your specific circumstances should always be obtained before taking any action based on this publication.

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Odette Gourley

Partner. Sydney
+61 2 9210 6066