Pre-Empting the Raising of the Bar

As I have mentioned, most of the provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 will come into effect on 15 April 2013.

The new requirements will apply to all new applications, including divisionals, filed on or after 15 April 2013. They will also apply to applications that are pending on that date for which examination requests have not been filed. It follows that you should act before that date if you would like your application to be subject to the current, more lenient requirements.

Actions could include the following:

  • Entering national phase and requesting examination before the deadline
  • Filing a standard patent application and requesting examination before the deadline
  • Filing a convention standard patent application and requesting examination before the deadline
  • Filing one or more divisional applications and requesting examination before the deadline
  • Requesting examination before the deadline

In some cases, it may even be advisable to file a standard patent application instead of a provisional patent application and request examination before the deadline.

The new Act introduces a number of important changes. Thank you to IPTA for providing the following summary:

  • Removal of the territorial limitation for common general knowledge (raising the "inventive step bar")
  • Removal of the words "ascertained, understood and regarded as relevant" from s7(3) (raising the "inventive step bar since widens the examiner's discretion to combine documents)
  • Specification must disclose a "specific, substantial and credible" use for the invention
  • Increased "sufficiency" of description requirement
  • Replacement of "fair basis" requirement with "support" requirement (raises specification bar)
  • Expansion of privilege provisions to include foreign attorneys, and to extend to communications with third parties in certain instances
  • Removal of "benefit of the doubt" standard and introduction of "balance of probability" standard for all grounds considered during examination, re-examination and prosecution
  • Examination to extend to utility and usefulness
  • Omnibus claims no longer allowed
  • Commissioner to have discretion to refuse application to defer acceptance
  • Modified examination no longer available
  • Entitlement issues can be corrected after grant of a patent
  • Withdrawal of requirement to request that earlier withdrawn, abandoned or refused applications be disregarded so that priority can be claimed from a later application
  • The grace period provision will be amended to extend to publication of information, rather than publication of the invention, and the grace period will extend to secret use
  • No longer possible to add matter to specifications after filing, except when correcting a clerical error or obvious mistake
  • Commissioner's consent required to withdraw an opposed application
  • Deadline for filing all divisionals and to convert previously filed applications to divisionals will be 3 months from the date of advertisement of acceptance of the parent

The new Regulations will probably be published in June or July this year. I will post when that happens.


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