The Federal Government has unveiled a raft of reforms to Australia’s intellectual property laws, designed to strengthen Australia’s patent system and raise the quality of patents to levels similar to the United States and Europe.
The draft Intellectual Property Amendment (Raising the Bar) Bill was released overnight and is the culmination of a very long consultation period with industry.
IP lawyer Michael Caine, who is a partner at Davies Collison Cave and has been overseeing the Institute of Patent and Trade Mark Attorneys of Australia responses to IP Australia’s various discussions papers, says the Institute is “generally supportive” of the bill and the reforms will help strengthen Australia’s patent systems.
“I think the quality of patents will be greater. They will be more in line with patents in the US and UK.”
Caine nominates five main positive changes:
– Patent applicants will be required to provide a more detailed description of their invention and explain how the invention will be used throughout the scope of the claim. Caine says this is much more onerous requirement, more in line with the level of description required in Britain.
– Patent applicants will need to ensure the scope of their claim corresponds to the description of the invention they provide. This is designed to ensure that applicants cannot try to claim their patent covers a wider scope than it actually does.
– Patent applicants will be allowed to use a much wider range of supporting evidence when making a claim. Currently, evidence used to support a claim is restricted to Australian-based experts and information. The Patent Office will also have more discretion on the documents it excepts in opposition to a claim.
– The burden of proof in patent re-examinations will be changed. Currently, the laws give the benefit of doubt to the applicant. Under the reforms, examiners will use the “balance of probabilities” test.
– Exemptions for researchers who use patents for experimental research.
But Caine is concerned with one crucial aspect of the reforms. The draft bill states that once the new laws come into force, all patents in the system will be examined to the new standards.
“Our view is that is extremely unfair on patent applicants that have filed their case under the expectation it would be examined under current laws,” Caine says.
Submissions on the draft bill are due by April 4.
Federal Innovation Minister Kim Carr said in a statement the reforms would “make it easier for our overseas partners to continue to bring new technology to Australia”.
James was the editor and publisher of SmartCompany and LeadingCompany for five years. He is now the Australian Financial Review‘s companies & markets editor, and a former BRW editor.
