IP Laws Amendment (Raising the Bar) Bill 2011

Author: Jasmine Burrows, Progressive Legal

Intellectual property (IP) rights play a crucial role in fostering innovation, creativity, and economic growth. In 2011, the Australian government introduced the IP Laws Amendment (Raising the Bar) Bill, a significant milestone in Australia’s intellectual property landscape.

This legislation aimed to modernise and strengthen the country’s IP laws by raising the standards for granting and enforcing intellectual property rights. In this article, we will delve into the key provisions and impacts of the IP Laws Amendment Raising the Bar Bill 2011.

“The Bill amends the Patents and Trade Marks Acts to refine opposition proceedings to better meet their intended purpose as a means for settling disputes quickly and inexpensively.”

What is the IP Laws Amendment (Raising the Bar) Bill 2011?

The IP Laws Amendment (Raising the Bar) Bill 2011 was introduced to strengthen Australia’s IP framework to align it with global standards. It sought to improve certain deficiencies that existed at the time. It is commonly referred to as the Raising the Bar Bill. The Bill addressed the following six key areas:

Schedule 1 – Raising the quality of granted patents.

Schedule 2 – Free access to patented inventions for regulatory approvals and research.

Schedule 3 – Reducing delays in resolution of patent and trade mark applications.

Schedule 4 – Assisting the operation of the IP profession.

Schedule 5 – Improving mechanisms for trade mark and copyright enforcement.

Schedule 6 – Simplifying the IP System.

Raising the quality of granted patents

Inventive and innovative step

The amendment eliminated geographical limitations when assessing the inventive step and innovative step in patent applications. Previously, the evaluation was restricted to knowledge within a specific geographic area, but now it considers global common general knowledge, providing a broader perspective.

Furthermore, the requirement that prior art documents must be recognised as relevant by a skilled person has been removed. Now, all prior art documents can be considered, regardless of their perceived relevance, leading to a more comprehensive evaluation of the inventive step.

Usefulness

Another important aspect is the test for usefulness, which has been strengthened to prevent the claiming of speculative inventions. Under the strengthened test, inventors now must provide evidence or demonstrate that their invention has a practical application.

Disclosure in patent applications

The disclosure standard has also been raised in terms of clarity and completeness. The description provided in a patent application should be written in a way that someone with the necessary expertise in the field can understand and replicate the invention based on the information provided. The description should be comprehensive, leaving no ambiguity that would hinder a skilled person from carrying out the invention.

Fair basis

The concept of “fair basis” has been replaced with the requirement that the claims are fully supported by the description of the invention. This change ensures that the claims made in an Australian patent application are more robust and well-supported. It helps prevent situations where claims are overly broad or unsupported by the description, which could lead to weaker or invalid patents.

Priority dates

Disclosure in a priority document must be clear and complete, preventing applicants from securing a priority date based on a speculative or incomplete disclosure.

Preliminary Search and Opinion (PSO)

A new provision allows the Commissioner to conduct a Preliminary Search and Opinion (PSO) on a complete application. This provides early information about the likely patentability of inventions when no search and examination report is expected. It’s a useful tool for inventors to gain insights into the patentability of their inventions at an early stage.

Examination and re-examination

During examination and opposition proceedings, the grounds considered for a standard patent application, a standard patent, and an innovation patent have been expanded to include usefulness and prior use. This gives the Commissioner more comprehensive grounds to examine patents and allows for a more thorough evaluation of their validity.

Amendments not allowable

This section prevents the amendment of a complete patent application. In simple terms, once a patent application is filed and considered complete, you can’t make any changes to it. There are exceptions to correct clerical errors or obvious mistakes. Where a non-allowable amendment is accidentally allowed by the Commissioner, the priority date will be changed to when the amendment was made.

Application provisions

Raised examination standards, expanded examination grounds, and a higher standard of proof will be applicable to standard patents and innovation patents.

Free access to patented inventions for regulatory approvals and research

Regulatory use exemption

If you’re doing something specifically to gather information needed for regulatory approval, you won’t be considered to be infringing on a patent. This exemption applies to all technologies except for pharmaceutical patents, which already have a similar exemption under a different section.

Research exemption

This change allows you to conduct experimental activities related to a patented invention without being accused of patent infringement. The exemption covers any research activities where the main purpose is to gain new knowledge, test a theory or principle about the invention, or make improvements or modifications to the invention.

Reducing delays in resolution of patent and trade mark applications

Patent oppositions – amendments directed by courts

Courts are allowed to review any proposed amendments made to a patent application when there’s an appeal. This prevents different decision makers from dealing with the same issues and ensures consistency.

Patent oppositions – withdrawal of applications

The Commissioner is allowed to deny an applicant’s request to withdraw an opposed patent application if it is substantially the same as the original invention. This prevents applicants from delaying the resolution of their opposed application by withdrawing it and filing a new one.

You also have the right to appeal the Commissioner’s refusal to the Administrative Appeals Tribunal.

Patent oppositions – Commissioner’s powers & sanctions of a failure to comply

A stricter rule was introduced for the Commissioner’s powers to call witnesses and request documents. The Commissioner can now refuse requests if they believe the material is not relevant to the case. Non-criminal penalties were also introduced for not complying with the Commissioner’s powers.

The penalties will be determined based on the specific situation and the person’s role in the proceedings.

Trade mark oppositions

The changes in trade mark opposition proceedings eliminate the requirement for opponents to serve a Notice of Opposition on the trade mark applicant.

Instead, opponents must file a Notice of Intention to Oppose and a Statement of Grounds and Particulars. The Registrar is given the power to dismiss opposition proceedings under certain circumstances.

The introduced requirements to file a Notice of Intention to Oppose and Statement of Grounds and Particulars only apply to oppositions before the Registrar, while oppositions before a court will follow existing procedures.

Additionally, a new requirement was introduced where trade mark applicants must defend their application in the opposition proceedings to ensure uncontested oppositions can be resolved sooner. The lapsing of a trade mark application is allowed if the applicant fails to file a notice of intention to defend.

Patent oppositions

The changes to the Patents Regulations aim to speed up the resolution of patent opposition proceedings.

There are two types of opposition: substantive and procedural. Procedural oppositions, which are less complex, will have a reduced time period of 2 months, while substantive oppositions will maintain a 3-month period.

The requirement for documents, such as prior art citations, to be provided along with the Statement of Grounds and Particulars is now mandatory, allowing applicants to better assess their case.

The Commissioner has the authority to determine the procedures for procedural oppositions on a case-by-case basis.

The Commissioner can decide to hold a hearing and has the option of conducting it orally or through written submissions. Summaries of the parties’ arguments will be provided at least 10 business days before the hearing date, promoting efficiency.

Parties are no longer required to serve documents and evidence on each other in an opposition.

Assisting the operations of the IP profession

Registration of patent attorneys – for individuals and companies

A company can register as a patent attorney if it has at least one director who is a patent attorney and fulfills certain requirements. This change enables Australian patent attorney firms to operate as incorporated entities. To prevent unregistered companies from falsely claiming to be patent attorneys or conducting patent attorney business, several offenses have been introduced.

Registration of trade mark attorneys – for individuals and companies

The new rules allow companies to register as trade marks attorneys. This means they can provide trade marks attorney services as a company. One important requirement for a company to be registered is that at least one of its directors must also be a registered trade marks attorney.

Client-attorney privilege

The bill extends the protection of client-attorney privilege to cover communications between clients and patent attorneys and trade mark attorneys. This means that confidential communications between clients and these professionals will be protected.

Disclosure of information to ASIC

The bill allows the Director General of IP Australia to share relevant information about incorporated patent attorneys and incorporated trade mark attorneys with the Australian Securities and Investment Commission (ASIC). This disclosure is done to assist ASIC in performing its functions, such as investigating allegations of fraud involving the incorporated patent attorney or company.

Improving mechanisms for trade mark and copyright enforcement

Notice of seizure and claim for release of goods

The new rules allow customs authorities to share information with trademark owners and copyright owners about imported goods when they file an objection. These rules also explain how to reclaim goods that have been seized. If the owner wants the seized goods back, they must submit a request to customs.

A request should include information that allows the trademark owner to contact the person who imported the goods for potential legal action. The seized goods will only be returned if the owner agrees or doesn’t pursue legal action, or if a court decides it’s appropriate.

Inspection of seized goods

The trademark owner can examine or take samples of the seized goods to determine if they infringe on their trademark. The copyright owner can also inspect or take samples of the seized goods to determine if they are infringing copies.

Forfeit and disposal of seized goods

If the person who imported the goods doesn’t claim them, they will be given to the government. The same applies if they claim the goods but fail to collect them within 90 days.

The government can dispose of the unclaimed goods and there’s a 30-day waiting period before they do so, allowing the owner a chance to claim them.

Simplifying the IP system

Grace Period

A new 12-month period was introduced to address situations where a secret use could invalidate a patent claim. The existing grace period is also clarified to include disclosures made earlier that are not part of the current claim but could make the claim obvious.

Omnibus Claims

In the new provisions, claims cannot rely on references to the description or drawings, unless it is absolutely necessary to define the invention. This means that the use of broad or generic claims will no longer be allowed.

Entitlement

A patent will not be considered invalid simply because it was granted to the wrong person. The Commissioner has the authority to correct errors or omissions in the patent register and rectify ownership. This provision applies to already existing patents as well.

Modified Examination

Under the new provisions, it will no longer be possible to have modified examination based on a corresponding patent granted in a recognised country.

Key Takeaways

The IP Laws Amendment (Raising the Bar) Bill 2011 represents a significant step forward in strengthening and improving intellectual property laws. The provisions introduced in the bill sought to enhance the quality of granted patents, facilitate innovation and research, reduce delays in application processes, support the IP profession, improve enforcement mechanisms, and simplify the IP system.

These amendments aimed to create a robust and effective intellectual property framework that promotes creativity, protects rights, and fosters economic growth.

If you have any further questions on these amendments, do not hesitate to contact our team at Progressive Legal by filling out the contact form on this page or giving us a call on 1800 820 083.