The Intellectual Property Amendment (Raising the Bar) Act 2012 was enacted on 15 April 2012. This Act introduced many changes, some of which were effective on that date, whereas many others – particularly those relating to requirements for patentability and for patent specifications – are effective after 15 April 2013.
The 2012 Act, as its name implies, raises the standard of patentability in many aspects, including a higher level of inventive step, and requirements on usefulness and sufficiency. In general, this means that pending applications which may result in a valid patent under the current legislation may not necessarily be so under this higher standard applying after 15 April 2013. It is also important to note that, for any future opposition or litigation, the current legislation will apply not only to the application, but also to any resultant patent for its duration.
The key point is that the existing law will apply to all current pending cases – provided a request for examination is made before 15 April 2013.
As a result, any applicant (or potential applicant) in Australia might consider:
- Requesting examination of any pending Australian application before 15 April 2013
- Where a PCT application has been filed, entering National Phase in Australia and filing a request for examination before 15 April 2013
- Filing a convention application in Australia before 15 April 2013 (with an examination request) if a PCT application has not been filed by that date
- Filing a divisional application (with an examination request) before 15 April 2013 – particularly where there may be a unity objection.
By way of background, examination of patent applications in Australia is not automatic, but rather examination must be formally requested. Although Australian legislation sets out timeframes and mechanisms for requesting examination, examination may also be requested at any time if the applicant so requires. This flexibility therefore enables applicants to take advantage of the currently less stringent patentability requirements – again, provided examination is requested before 15 April 2013.
Our local office Dennemeyer & Associates in Australia is ready to assist you with filing, requesting examinations, and meeting all the necessary requirements imposed by the new Act. Contact us at: firstname.lastname@example.org.