Australia has a well developed IP system fundamentally based on the pre European Union British system. However, as a technologically advanced country, Australia has been finding its own way in the IP universe for some time and the IP laws in force in Australia today show a variety of influences.
This review is intended to provide a quick comparison between the Patent Laws of Australia and those of US and Europe.
As a signatory to TRIPS, you would expect Australian IP Laws to have certain similarities with the laws of other TRIPS signatories. In fact with several major revisions in the past 15 years Australian law is fully compliant with TRIPS and in recent negotiations to conclude an Australia-US Free Trade Agreement, only relatively minor changes were required to Australian Patent Law (though if you read the local popular press you might be lead to believe otherwise).
Several types of Patents
As well as Standard Patents, Australia has an Innovation Patent System which might be compared with Utility Models in some other jurisdictions. Both Standard and Innovation Patents can be filed as Divisional applications of an earlier application (that has not been granted at the time of the Divisional Application). Divisional Applications can be used like US Continuation applications as well as providing a mechanism for prosecution of material excluded from the parent due to plurality of invention issues. There is also a little used provision for filing a Standard Patent of Addition (In some ways similar to a US CIP). Provisional applications may be used to establish an internal priority giving the applicant 12 months to file a Standard or Innovation Patent Application.
Australia is a signatory to the Paris Convention and PCT and has fully implemented the most recent changes to PCT. Internal priority is available via use of Provisional Applications and a Standard Patent application is given a 20 year term dating from the filing date of the Standard Application (i.e. up to 21 years from the filing of the provisional application or Basic application in another country). When entering the Australian National Phase from a PCT application the due date is 31 months from the priority date for both Chapter I or Chapter II applications. Extensions of term of up to 5 years may be obtained for patents relating to pharmaceutical substances provided a substance disclosed and falling within the scope of the claims is included in the Australian Register of Therapeutic Goods.
Innovation patents have a term of 8 years and a lower standard of inventiveness (they require an Innovative Step rather than an Inventive Step). Innovation Patents also have a maximum of 5 claims.
Grace periods in Australia are more generous than the standard offering under the Paris convention. Since 2001 applicants have been able to avail themselves of a 12 month grace period to file a Standard or Innovation Patent Application. This applies whether the disclosure was by or with consent of the owner of the invention or by a third party who obtained the information from the owner and disclosed it without consent. It is unnecessary to notify the office that the applicant is relying on a grace period when filing the application
In Australia it is necessary to request examination of a Standard Patent Application within 5 years of filing the complete application date. However, the Commissioner has the power to shorten this period in order to maintain a consistent work flow in the office and it is usual for the Commissioner to issue a direction to request examination in which case a request must be filed within 6 months of the date of the direction. Such directions currently issue between 30 and 50 months from the priority date depending on the technology of the invention. Once examination has been requested the case will pass to an examiner and a first report will issue within about 6 - 12 months. In many technologies, Australian examination will occur before examination of the equivalent case in US or Europe, particularly for PCT National Phase Applications. However, examination can also be expedited if there is a threat of infringement or if the granting of a patent is required to conclude some commercial agreement.
After a first examiner's report issues the applicant has 21 months to place the application in order for acceptance. There is no limit to the number of examiners reports that might issue in the 21 month period. The standard of examination is relatively high and it has recently been announced that the US patent office is trialling an arrangement in which the Australian Patent Office will examine PCT applications filed at the USPTO as the Receiving Office under contract.
Examination is similar to other jurisdictions, and amongst other things, the examiner will report on:-
- obviousness or inventive step.
- plurality of invention
- clarity of the specification and claims;
The test for obviousness involves comparing the invention with a prior art base comprising disclosures made public by printing or by doing an act and the sum of common general knowledge of a skilled workman in Australia at the priority date.
The invention will be considered obvious if a hypothetical unimaginative skilled addressee would consider the invention obvious in the light of one or more prior publications alone or when combined with the common general knowledge provided the publications could be reasonably expected to be ascertained, understood, regarded as relevant and where a combination of sources is involved, the combining of the information would also have been considered obvious.
Applicants have a duty of disclosure that is not as onerous as in US for example. Applicants must tell the Australian Patent Office about any document mentioned in a search report issuing from another patent office on a corresponding application. The information must be provided to the Australian Patent Office by the later of 6 months from the date of the request for examination or 6 months from the date on which the search report was issued by the foreign Patent Office. The duty applies to search reports that issue before the patent is granted so it is possible that the search report details are not sent to the Patent Office until after Grant. The Commissioner has the power to initiate re-examination in that case if it is appropriate. Note however that the actual documents (or translations of foreign text) do not have to be lodged only the list of number except for PCT and EP search reports in which cases the category of the citation (X, Y, P, A etc) must be provided.
A pre Grant opposition system exists for Standard Patents in Australia. An opponent may file an opposition within 3 months of the date of advertisement of the accepted application. The Opponent must then file a Statement of Grounds and Particulars by the opponent within 3 months of the filing of the opposition and Evidence-in Support of the Opposition within a further 3 months (extendable in up to 3 month increments). The applicant then has 3 months to file Evidence-in-Answer (also extendable in up to 3 month increments after being served with the Evidence-in-Support). Finally the opponent may file Evidence-in-Reply within a further 3 month period (extendable) and the matter is then heard before a senior examiner delegated by the Commissioner.
Third parties may also attack a granted patent by requesting re-examination (not an inter-parties procedure) or, by seeking revocation before the Federal Court. Re-examination may be less reliable than opposition as it is not an inter-parties procedure and revocation introduces a significant expense as it moves the forum from the Patent Office to the Federal court.
Innovation Patents are granted without substantive examination which in theory allows them to be granted within days of filing (though in practice this can take several months (unless expedition is requested). However once granted the Innovation Patent cannot be enforced until it has been examined and "certified". It also cannot be opposed before certification. There is no time limit for requesting examination however a third party can request examination to force determination of validity. Innovation Patents can be divided out of a Standard Patent Application and this mechanism can be used to create an enforceable right (after Certification) while the Standard Patent Application is held up in Examination or Opposition. Dual patenting restrictions will require that the innovation patent be surrendered before a patent is granted on its parent.
This overview is intended merely to highlight areas where Australian Law may be different to that of other jurisdictions. In coming months we will attempt to provide detailed information on some important areas of Australian Patent Law and practice. However in the meantime further detail on some of these issues may be obtained from our web site at www.fbrice.com.au or by contacting Chris Owens (firstname.lastname@example.org) or any of the other practitioners of F B Rice & Co, offices Sydney and Melbourne Australia.
The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
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