Towards a stronger and more efficient IP rights system

IP Australia has issued the first of two papers setting out details of proposed changes initially discussed in its earlier series of consultation papers (for further details please see "Patent legislation – proposals for improving the IP system").

The new consultation paper, entitled “Towards a Stronger and More Efficient IP Rights System”, explains how IP Australia intends to progress each of the proposals put forward in the first round consultation papers - specifically, the papers directed at:

• Raising patentability standards.
• Proposing exemptions to experimental use from patent infringement.
• Resolving patent and trademark opposition proceedings and divisional applications more quickly.

In principle, support for many of the proposals was expressed, but there were mixed views as to the best way of achieving the proposed changes. There was strong support across submissions for improving the alignment of Australian patentability standards with standards in other countries. Many respondents commented that lower standards are adversely affecting innovation and investment in research and development in Australia and contributing to the cost and complexity for users of the patent system.

Some of the key proposals in raising patentability standards include the following: 

• "Fair basis" is a well-established Australian legal concept to determine whether claims are supported by matters described in the specification. One proposal is to replace the requirement that claims be “fairly based” on matters described in the specification with a requirement that the claims be “supported by” matter described in the specification. The intention of this amendment is that the concept of “support” would be interpreted in a manner similar to that used in overseas jurisdictions. 
• Another significant proposal is to require that a provisional specification describe the invention “in a manner which enables the invention to be performed by a person skilled in the relevant art without undue experimentation”. At present, it is necessary only for a provisional specification to describe the invention. The proposed change seeks to ensure that the provisional specification provides an “enabling disclosure” which will satisfy tests for supporting a priority claim used in other countries when an Australian provisional specification serves as the priority document. 
• A further key proposal is to remove the limitation that common general knowledge be confined to that existing in Australia for the purposes of assessing inventive step. The intention is that common general knowledge would be the knowledge which a skilled worker in the art may be expected to have as part of his or her background knowledge, and not just the knowledge that a skilled worker in Australia would have. This will enable evidence of overseas experts to be used in oppositions or court proceedings here in Australia.

As regards the changes relating to exemptions to patent infringement, it is proposed that the Australian act be amended so that the rights of a patentee are not infringed by acts done prominently for experimental use on the patented invention. These acts include (but are not limited to):

• Determining how the invention works.
• Determining the scope of the patent claims.
• Seeking an improvement to the invention.
• Testing the validity of the patent.
• Determining whether an act or product infringes the patent.

It is hoped that this exemption will provide researchers and business with greater certainty as to where they have freedom to operate. Furthermore, it is proposed that the exemption operate in addition to any common law exemption or implied statutory exemption that might otherwise exist.