IP Australia raises the bar for validity of Australian patents

The IP world has long considered the patent examination process by IP Australia to be less rigorous and more malleable than the processes of its counterparts in Europe, Japan and the United States. Broader claims are commonly achieved in Australia than in other parts of the world and there is a school of thought that the presumption of validity for an Australian patent is not as high as for its European, Japanese and US counterparts.

Since at least 2002 the Australian government has sought on several occasions to legislate in order to raise the presumption of validity of Australian patents. In the early 1990s, the law was adjusted to take account of what constituted ‘new’ subject matter (ie, all documents published anywhere in the world). Compare this, for example, with the situation in New Zealand, where it is still the case that only documents published in that country are utilised as the basis for testing newness. Australian law was changed again in 2002 to ensure that the use of an invention anywhere in the world would negate its patentability in Australia.

However, there was still criticism that not all relevant publications and uses were coming to the attention of IP Australia in its deliberations and that, as a result, Australian patents were still broader than they should be. Thus, for several years, Australian patent applicants have been required by law to advise IP Australia of the results of patent and literature searches conducted by the patent offices of other jurisdictions on counterpart applications. The results of this change in the law have been:

• an increase in the volume of paperwork handled by IP Australia;
• users unhappy with punitive late fees; and
• form reporting letters from IP Australia drawing attention to prior publications cited by other IP authorities without any explanation of their relevance in Australian law.

Now IP Australia has identified a new mechanism that it believes will increase the presumption of validity of Australian patents - namely the use of online resources such as the US PAIR system and the European epoline. Now, virtually identical information to that previously sought from applicants, and more, is available to IP Australia without the assistance of users. Recently, examination reports from IP Australia have utilised not only the results of the searches issued by other IP authorities, but also the content of the examination reports accompanying those searches. IP Australia has adopted the mantra “one search, one examination” as its vision of the future.

In recognition of the globalisation of IP information, with effect from October 22 2007, the Australian Patents Regulations 1991 were amended so that patent applicants are no longer required to disclose the results of documentary searches carried out by foreign patent offices in relation to corresponding applications. However, the changes are not retrospective. Search results issued by a non-Australian IP office after April 22 2007 will not need to be disclosed in relation to a corresponding Australian patent application. However, while the statutory requirement to lodge prior art search results has effectively been abolished, in order to avoid the possibility of being held to have made a statutorily barred false suggestion or misrepresentation to IP Australia, it is recommended that relevant prior art be brought to the attention of IP Australia or dealt with in an appropriate manner (eg, by amending claims), even after October 22 2007, particularly where this art has been identified in a less mainstream patent office. This is particularly critical in relation to strategically important patent assets.

These changes make it more likely that Australian claims will more precisely match those granted in other jurisdictions, particularly since it is from the authorities of these other jurisdictions that IP Australia is taking its lead on matters of content of their examination reports. However, the fundamental differences between Australian and foreign law on how to test for the basic tenets of patentability, particularly whether a patent contains an inventive step, have not changed. Ironically, this means that Australian patents may end up being narrower in their scope of protection than they need be.

The proactive practitioner, aware of the similarities and differences between Australian, European, Japanese and US law, will continue to be an important member of the intellectual asset management team to ensure that the internationalisation of patent office practice does not denude patentees of what is lawfully theirs in Australia. It will be fascinating to see where IP Australia turns next in its quest to raise the presumption of validity of Australian patents. The patent examination highways between Europe, Japan and the United States look set to extend from the northern to the southern hemisphere.