04 April 2009

The Australian patent office wants to raise the bar

IPAustralia is proposing to make it more difficult to get a patent. The consultation paper can be read here - http://www.ipaustralia.gov.au/pdfs/news/ip_reforms_balance.pdf.

The proposals are:

1. That the "fair basis" requirement controlling the relationship between the claims and the specification be changed to require that the whole scope of the claimed invention be enabled and that the description provide sufficient information to allow the skilled addressee to perform the invention without undue experimentation. [At the moment, it is only necessary that the description provide sufficient information to enable the reader to produce something within the scope of each claim.]

2. That the requirement for full description is met if the description of the claimed invention was sufficient at the filing date to allow the skilled addressee to perform the invention without undue experimentation. [At the moment it is possible to make an amendment in Australia to fully describe the invention or to include the best method of performing the invention up to at least grant of the patent.]

3. That the disclosure requirement for establishing the priority date of claims is replaced with a
descriptive support requirement similar to that in proposal 1 [At the moment the level of disclosure required to support a priority claim is the same as that for "fair basis". Also, there must be consistency between the invention as claimed and the disclosure in the priority document.] 

4. That inventive step be assessed in the light of common general knowledge anywhere in the world. [At the moment inventive step is assessed in the light of common general knowledge in Australia.]

5. That the requirement that prior art information for the purpose of inventive step must be
such that a person skilled in the art could be reasonably expected to have ascertained the prior art be removed and that the requirement that prior art be understood and regarded as relevant be retained.

6. That the inventive step test be changed to a test where the claimed invention is obvious if it was ‘obvious for the skilled person to try a suggested approach, alternative or method with a
reasonable expectation of success’. [At the moment, the the test for lack of inventive step, or obviousness, is whether or not the skilled person would be led directly as a matter of course to try a particular approach with a reasonable expectation of success.]

7. That "usefulness" be included among the grounds considered during examination and re-examination and that the requirement for usefulness is only satisfied if the patent specification
discloses a specific, substantial and credible use for the invention. [At the moment, usefulness is only a ground for opposition and revocation through the courts, and is not among the criteria assessed during examination.]

8. That "prior use" be added to the grounds considered during examination and re-examination.

9. That the grounds for re-examination be expanded to all the grounds that can be considered during examination, opposition and revocation proceedings. [At the moment, only novelty and inventive step can be considered during re-examination.]

10. That "balance of probabilities" be the standard of proof applied to all requirements
during examination, re-examination and opposition proceedings. [At the moment, some requirements are assessed according to a "benefit of the doubt" standard in favour of the applicant.]

Comment

This a noble proposal. 

One of the reasons given by the authorities for introducing the innovation patent system was that patents are difficult and expensive to get. So will this reduce the number of filings for standard patent applications? It is certainly going to cost more to get a patent. If so, will there be an increase in the number of filings for innovation patents. Oh dear, in IPAustralia's mad rush to harmonize, it may have to throw out the innovation patent system because its trading partners do not have such a thing. Then where will the small inventor be? 

The USPTO is presently grappling with reduced revenue because of the fall off in official fees from new filings. Australia is also feeling the effects of the economic downturn. Is this a good time to be biting the hand that feeds?  

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