Towards a stronger and more efficient IP rights system: part two

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

In “Towards a stronger and more efficient IP rights system” we discussed the first of the new papers, entitled “Towards a Stronger and More Efficient IP Rights System”, and explained 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.

The second paper, also entitled “Towards a Stronger and More Efficient IP Rights System”, includes further explanation as to how IP Australia intends to deal with the following proposals tabled in the first-round consultation papers: 

• Streamlining the patent process.
• Flexible search and examination.

In principle, support for many of the proposals was expressed, but there were mixed views as to the best way to achieve the proposed changes.

Some of the key proposals carried through to the second round of consultation in respect of streamlining the patent process include the following: 

• The definition of the "prior art base" will be amended to set out that for the purposes of determining novelty, the information in the citation at its filing date is taken into account (no matter whether that information is in the specification as published). This will reduce complexity and better align Australian practice with that in other jurisdictions. 
• The scope of product-by-process claims will be revised. If a claim defines a product in terms of the method or process by which the product is produced, the claim will be construed as defining the product per se - that is, the product produced by that method or process, or by any other method or process. Under the proposed change, the patentability of a product would rely on the features of the product itself and not on the process by which it was made. Thus, where a process does not impart distinctive characteristics to a prior art product, the product will lack novelty. When the product can be defined only in terms of the method or process by which it is produced, the onus is on the applicant to establish that the product per se is novel. The proposed approach is consistent with the treatment of product-by-process claims in Europe and the United States. Australian legislation protects patentable processes through its infringement provisions, under which a patented process is infringed by the exploitation of a product produced by that process. 
• In general, omnibus claims will not be allowable and claims shall not, except where absolutely necessary, rely on reference to the description or drawings. Again, this brings Australian practice into line with that of most other jurisdictions. 
• Amendments will be made to the treatment of unity of invention to clarify that the practice applied during Australian examination is consistent with the approach to unity under the Patent Cooperation Treaty (PCT). That is, the claims will be taken to relate to one invention if they relate to a group of inventions linked to a single inventive concept.

Some of the key proposals in flexible search and examination include the following:

• A single examination system will apply to all standard patent applications. The examination fees will be varied to reflect the amount of original work by the examiner and the degree to which the examiner relies on work done by recognised foreign offices such as the US Patent and Trademark Office and the European Patent Office. Further, it is proposed that the act be amended to repeal the provisions allowing for modified examination. 
• In a significant proposed change, applicants will have 12 months, rather than 21 months, to gain acceptance of their application following the first examination report. Further, applicants will have two months, rather than six months, to respond to a direction by the commissioner to request examination. 
• A system of early search and examination for non-PCT standard applications is also proposed. This is intended to provide applicants and the public with an early indication of the patent rights that are likely to be granted for the invention. IP Australia will conduct preliminary search and examination where the application:
  • Is other than a PCT or a divisional application.
  • Does not have an equivalent application filed in another recognised jurisdiction for which a search of the claimed invention by that jurisdiction is expected to be published before examination of the application.

The scope would be similar to an international search and preliminary examination conducted under the PCT.

All papers are available on the IP Australia website at www.ipaustralia.gov.au/resources/news_new_archived_2009.shtml