20 July, 2012


Intellectual Property Laws (Raising the Bar) Act 2011


In brief


  • The Intellectual Property Laws (Raising the Bar) Act 2012 (the "Act") has made broad legislative changes to many areas of intellectual property in Australia, particularly to the Patents Act 1990 (Cth). The bulk of the amendments made by the Act will come into force on 15 April 2013.
  • The Act expands the scope of the prior art that can be considered when deciding whether a patent satisfies the "inventive step" requirement.
  • The Act also implements a more stringent test for utility, requires more extensive disclosure in specifications and expands the ability of the Commissioner to reject patent applications.


The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was introduced into the Senate on 22 June 2011. That Bill (which became the Act without amendment) was passed by the House of Representatives on 20 March 2012 and received royal assent on 15 April 2012.


This article provides a more detailed overview of the provisions of the Act, with a particular focus on the amendments it will make to the Patents Act 1990 (Cth) when in force. The Act consists of six Schedules, the most significant of which is Schedule 1: "Raising the quality of granted patents."


Most provisions of the Act are to commence on 15 April 2013. Two important parts of the Act, however, commenced on 16 April 2012 (the day after royal assent). These are Schedule 2, which clarifies the research exemption from patent infringement and expands the regulatory approval exemption to non-pharmaceutical patents, and an amendment to the Patents Act which makes clear that, once a patent specification is open for public inspection, reproducing, communicating or translating it does not amount to copyright infringement.


Expansion of relevant prior art


The Act will amend the territorial limitation on inventive step, so that material from outside Australia can be considered in determining the relevant prior art base. The Explanatory Memorandum for the Act (the "EM") notes that this would bring Australian law more closely in line with that of our major trading partners. Section 7 of the Patents Act currently defines prior art as including only information that would be "ascertained, understood and regarded as relevant" by a person skilled in the art. The Act, when in force, will remove these words from the definition. The EM refers to the decision in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26, in which a US patent for football tags did not amount to relevant prior art invalidating a very similar patent application in Australia because Heerey, Kiefel and Bennett JJ held:


"it could not be reasonably expected that a Rugby League or Australian Rules coach, referee, umpire or administrator would conduct a search in the United States Patent Office". The EM noted that material such as this should be treated as relevant, and notes that information of this kind is "readily available through the internet."


Clarification of the meaning of "usefulness"


Schedule 1 of the Act would also clarify the requirement of "usefulness" under the Patents Act, by requiring that, in addition to present requirements, a "specific, substantial and credible use" for the patent would be disclosed by the complete specification. The EM noted that this provision is intended to have the same meaning as the equivalent provision in the US. The Australian Law Reform Commission and the Intellectual Property Competition Review Committee had both previously recommended that this clarification be made.


Stricter specification requirements


The Act will amend the disclosure requirements of the Act to accord with the equivalent UK provisions, which require disclosure "in a manner which is clear enough and complete enough for an invention to be performed by a person skilled in the relevant art." This is an expansion of the current requirement, which recent case law has held to only require that something within each claim be disclosed.


The EM identified two key defects of the present test as being that patentees may gain protection over material that they have not sufficiently disclosed, and that other innovators may not be granted access to information which may assist their research and development.


More power to the Commissioner to reject applications


The standard of proof required by the Commissioner to grant a patent will be raised by the Act. At present, the Commissioner must accept an application unless it is practically certain or clear that it is invalid. Courts, however, apply the ordinary civil standard of proof by deciding the matter on the balance of probabilities.


The EM claims that this disjuncture, though historically sensible, is no longer necessary or appropriate. Technological tools including the Internet give the Commissioner an extensive ability to conduct searches and inquiries, and the establishment of the Federal Court means that the refusal of a patent can be more easily contested (historically, it was necessary to take a challenge directly to the High Court).


Clarification of research exemption and expansion of regulatory approval exemption


Schedule 2 of the Act commenced on 16 April 2012. This schedule amended the Patents Act to clarify that patented inventions can be used for research purposes without amounting to infringement. It has also expanded the exemption from patent infringement for activities necessary to gain regulatory approval for pharmaceutical products to all technologies.


Time limit on divisional applications


Schedule 3 of the Act seeks to reduce delays in the resolution of patent (and trade mark) applications. The Act, when in force will impose a deadline for filing divisional applications to the end of the period within which a notice of opposition to the grant of the patent can be filed. This, the EM claimed, will assist in making opposing a patent a more "swift, straightforward and inexpensive process" because it would be more difficult for applicants to delay the resolution of opposition proceedings by filing divisional applications late in the opposition period.


Other amendments


Schedule 6 of the Act attempts to address what the EM referred to as "a number of procedural hurdles and inconsistencies that unnecessarily complicate" the Australian intellectual property system. Amendments under this Schedule include specifying that a patent is not invalid merely because it was granted to a person who was not entitled to it. The remaining Schedules (4 and 5) would extend client-professional privilege to trade mark and patent attorneys, and bolster penalties for trade mark and copyright infringement in Australia.



For further information, please contact:


Ben Miller, Partner, Ashurst

[email protected]


Claire Roberts, Ashurst

[email protected] 


Homegrown Intellectual Property Law Firms in Australia



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