Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Thursday, December 6, 2012

Raising the bar for patents – act ASAP

By Lester Miller, Senior Associate

From April 2013, Australian patents will be more difficult to obtain, patent specifications will be judged more strictly, and applicants will have to act more swiftly in prosecuting their applications. We recommend that you file Australian complete or national phase applications and request examination on or before 12 April 2013 to take advantage of potentially broader scope of protection and stronger rules reducing the availability of prior art against innovation patents and standard patent applications under the present regime.

In our Intellectual Property Focus of 26 March 2012 we reported on major changes to intellectual property protection laws in Australia. Important aspects of those changes will apply to patent applications filed on or after 15 April 2013, or applications filed before that date and for which a request for examination has not been filed.

More complete specifications

Disclosure of an invention in provisional, innovation or standard patent specifications under an amended s40 of the Patents Act 1990 will no longer be held to the 'real and reasonably clear' fair basis test. Instead, the applicant or patentee will be required to disclose the invention in a manner which is 'clear enough and complete enough for the invention to be performed' by a person skilled in the art. Applicants and their attorneys may need to work more closely to ensure that sufficient supporting information is provided in patent specifications to meet the tighter disclosure test.

Claims of complete specifications must be 'fully supported' by the matter disclosed in the specification, a test which is applied in Europe and China and may lead to narrower scope of patents granted in Australia.

Other amendments to the Act also provide clarification of the usefulness of the invention requiring a 'specific, substantial and credible' application of the invention to be actual and disclosed.

Prior art base expanding

Common general knowledge available against a patent application or patent is presently limited to Australia; under the new regime it will be judged on a worldwide basis.

Under the present regime, prior art documents must be reasonably expected to be ascertained, understood and regarded as relevant by a person skilled in the art in order to be considered for inventive step. Under the new amendments that requirement will be removed and the test will be whether a skilled person could be reasonably expected to have combined any single piece of prior art information with the common general knowledge, or any two pieces of prior art information together. This will make it easier for IP Australia to sustain inventive step objections.


Patent applications will be required to be placed in order for acceptance within 12 months of the issuance of an examination report, removing the current nine months of available paid extension. This is not a date on which a response must be filed, but the date by which the Examiner must be satisfied that the application overcomes all objections to patentability of the claimed invention.

Amendments adding further support for an invention will no longer be allowable.

Divisional applications

IP Australia has suspended the present practise of expedited examination of certain divisional applications because of the new prosecution time limit to be introduced under the new regime.

Modified and deferred examination

These options of examination will no longer be available to applicants.

Quicken your step

For potentially greater patent breadth than may be available on or after 15 April 2013, we recommend applicants thoroughly review their patent applications without delay. Applicants should consider entering the National Phase of any PCT application designating Australia, filing divisional applications, filing associated complete applications, requesting examination on all pending applications, and making amendments to any application before 12 April 2012.

Exposure drafts of associated Regulations are now available.

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