Patent reforms II: IP Australia reports back on consultation

Earlier this year, IP Australia released a number of consultation papers aimed at improving efficiency in the IP system and strengthening various validity requirements for IP, particularly in the patents context.  These papers are available at IP Australia’s website. Our alerts on the earlier consultation papers are here and here.
As reported earlier, IP Australia has now released a more detailed paper, outlining its proposed reforms in more detail. The paper expands upon and, in some cases, alters previous reform proposals. It also notes the outcome of consultation and, in some cases, reveals how consultation has changed the regulator’s thinking on some points. Unusually, IP Australia has also placed proposed drafting instructions to implement the reforms on its website.
In relation to validity, the most significant changes are:

  • Expanding the prior art base further: IP Australia is now proposing to remove altogether the “skilled person” requirement from s 7(3)(a) of the Patents Act 1990 (other than where documents are combined). This would mean that any document could be used to deprive a claim of inventiveness, without a revoker needing to show that a skilled person would have ascertained, understood and regarded it as relevant. This goes beyond IP Australia’s previous recommendation, which was only to remove the requirement that the skilled person have “ascertained” the document, and is stated to reflect what was called for in submissions.
  • Codified obviousness threshold abandoned: IP Australia has resiled from its previous proposal to raise the bar for an inventive step by introducing a test of whether it was “obvious for the skilled person to try the claimed invention with a reasonable expectation of success”. It now proposes to restate the guidelines in the Patent Examiners’ Manual so that a higher threshold is required to be met, and to ensure more rigorous testing occurs at the examination stage. IP Australia says that this approach, combined with changes to the prior art base, will raise the bar for inventiveness without it needing to restate the test in legislation.
  • Different threshold for fair basis: in addition to the s 40 changes recommended by the earlier paper, IP Australia now recommends amending s 40(3) so that claims must be “supported” by, rather than “fairly based on”, the specification. It says the change is intended to import into Australia the requirements employed in overseas jurisdictions, such as that the description must provide a basis for each claim, the scope of the claims must not be broader than what is justified by the description and so on. Particular reference is made to the WIPO and EPO guidelines in this context.

IP Australia has also explained its specific proposal for an ‘experimental use’ exception to patent infringement. In some respects its thinking has changed from its earlier proposals. First, IP Australia is no longer recommending that the defence only apply to acts done solely for experimental purposes; rather it proposes that it also apply to acts done predominantly for an experimental purpose. It has also clarified that the existence of an ultimate commercial purpose will not preclude reliance on the defence. Secondly, it now proposes to set out the acts which will fall within the exception as an inclusive and not an exhaustive list, with the explanatory memorandum giving guidance as to what other acts would fall within the scope of the defence.
IP Australia appears to have taken into consideration a wide range of submissions in reaching its revised position. However, as submissions were not made public, it is hard to say whether the tenor of the submissions is in fact reflected by IP Australia’s comments. Further submissions will be received by IP Australia until 12 February 2010.

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