5 things ... US attorneys should know about the Australian patent system
Good US practice will put your clients’ Australian applications on a strong footing, but this article highlights five points of Australian patent practice that will help you sound like an Aussie.
1. Low formalities and efficient processing
“Robust IP rights delivered efficiently" is the current slogan of the Australian Patent Office, and is a slogan that the Patent Office lives by. Two of the key hallmarks of this approach are seen in the Patent Office’s approach to formalities and examination.
Filing a patent application in Australia is a straightforward process with few formal requirements. There is no need for the applicant to execute a power of attorney, or provide a declaration of inventorship. Assignments do not need to be lodged for routine filings, nor is there any duty to disclose prior art to the Patent Office.
The one Australia-specific item is the need to file a Notice of Entitlement that explains how the applicant came to own the right to a patent for the invention in Australia, and the right to make a priority claim to the priority application. If we have this information at the time of filing we can use IP Australia’s electronic filing system to lodge the application and save the applicant $100 in official fees. However, if the information is not available at filing we can delay filing the Notice until later in the process.
The full set of requirements to file an Australian patent application are explained in detail on our From filing to grant page.
Over recent years Australian Patent Examiners have been adopted a practice of reviewing the online file histories of corresponding US and European applications during examination. If objections have been applied by those offices and the pending Australian claims are similar, the Patent Office will typically raise a corresponding objection by either adopting the US or European rejections or re-stating them in a form applicable under Australian law.
Practically speaking, what this means is that if you have gained allowance of the corresponding US or European patent applications, and you are happy with the allowed claims, you can usually shorten prosecution in Australia by bringing the claims into line with the previously accepted claims.
There are a few traps to watch out for if this approach is to be adopted:
- Unity of invention - Australian unity law is more akin to that applied under the PCT than that applied by the USPTO. This means that new unity of invention objections may be raised in Australia even if they were not raised in the US.
- Claim breadth - Australian inventive step laws are different to the US and Europe, so it may be possible to gain broader protection in Australia.
2. Patent Prosecution Highway & Expedited examination
Australia is a party to the Patent Prosecution Highway (PPH) Pilot Program. Under this program, an Australian patent application can have examination expedited on the basis of the claims allowed in the United States or indicated as being allowable in a Preliminary Opinion on Patentability on a PCT patent application. In reverse, an applicant for a US patent can use the PPH to gain early examination of their US application based on a clear examination report or allowance of an Australian patent application.
Additionally the Patent Office has a more general program of expedited examination. The granting of expedited examination is at the discretion of the Patent Office but expedited examination will typically be granted in the following circumstances:
- Actual or likely infringement.
- The invention relates to “green technology”.
- Impending commercialisation of the invention in Australia.
The Patent Office tries to issue a first office action within 4 to 8 weeks of granting the request for expedited examination.
When all of this is combined, the short examination time offered by expedited examination can be followed up with a PPH request in the US to speed up examination of a US application - if a clear examination report issues from the Australian Patent Office.
Further details of the PPH program and expedited examination can be found in The Patent Prosecution Highway (PPH) – high speed examination of Australian and United States patent applications
3. Opposition to the grant of a patent
Australia has a process of pre-grant opposition. Any person can oppose the grant of a patent in Australia within 3 months of the Patent Office advertising acceptance of the application. The grant of a patent can be opposed on grounds such as:
- The claims are not novel or inventive.
- The claims lack fair basis (support) or clarity.
- The owner of the patent is not entitled to the grant of the patent.
- The invention is not a Manner of Manufacture (Patentable subject matter).
The process is initiated by lodgement of a Notice of Opposition at the Patent Office, followed by a Statement of Grounds and Particulars that sets out the opponent’s case.
The parties to an opposition are required to serve evidence according to a timetable prescribed under the Australian patents regulations, beginning with evidence in support served by the opponent.
When the evidence is complete, the case will be heard by the Patent Office. The hearing is usually based on the written evidence and it is unusual for experts to appear and give oral evidence at the hearing.
The hearing officer usually issues a written decision several months after the hearing.
As part of a major overhaul of Australia’s patent law (see below) oppositions will be further streamlined, as explained in Proposed Australian patent prosecution and opposition rule changes for US Patent Attorneys.
4. Innovation patents
Imagine a patent system that:
- Grants patents in about a month;
- Does not require the patented invention to be inventive; and
- Provides the full range of remedies for infringement.
The innovation patent is just such a thing!
Innovation patents were introduced in Australia in 2001 with the intention to provide a cost effective form of patent for small to medium businesses in Australia. This objective has been met, but the Innovation patent has also become the perfect "offensive patent" for litigation if the infringement takes place early in the life of the patent.
Innovation patents can also be filed in parallel with, or as a divisional (continuation) of, a standard patent, so the applicant can file an innovation patent if they detect an infringement of their rights while their Standard patent application is pending.
So what’s the downside? An 8 year term and a maximum of 5 claims, and they may not be around for much longer. The Patent Office conducted a review of the system last year with a view to overhauling it see Innovation Patent – Fundamental changes proposed.
More details about innovation patents and how useful they can be found in the articles:
- Not such a corny idea - patent infringement for food companies
- Market dominance through innovation patents
- Federal Court takes an innovative step on innovation patents.
5. 15 April 2013 - The bar is being raised
The most significant changes to Australia’s patent legislation, since introduction of the current Patents Act in 1990 come into effect on 15 April 2013 when the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) comes into force.
The main changes that are being introduced are:
- A higher threshold for obviousness
- A higher standard of proof required for allowance
- A new US-style utility requirement
- A higher threshold for written description and enablement
- A higher standard of proof for allowance – balance of probabilities.
- Prior use, usefulness and utility can be assessed at examination.
From a US perspective, many of the changes, such as the changes to utility requirements and higher written description and enablement thresholds, will be of limited impact in that your current drafting practices should comply with these provisions. The higher threshold for obviousness and the expansion of the pool of documents citable as prior art will also bring Australian obviousness requirements more into line with other jurisdictions like the US and Europe, but in doing so it is likely that it will be easier to oppose and revoke Australian patents and patent applications.
It is likely that the higher bar for obviousness will also have some impact during prosecution, in that it will be easier for Australian examiners to justifiably adopt the arguments raised by examiners of corresponding applications in the US and Europe.
If you do not want to have these new requirements apply to your applications, you will need to take one or more of the following steps before 12 April 2013:
- Request examination on pending applications.
- Enter the National phase of pending PCT applications with a request for examination.
- File an Australian complete application and request examination.
- File any planned divisional (continuation) applications with a request for examination
A description of the changes is provided in An easy guide to Australia’s new patent law under the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.