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1998 - 1999 - 2000 -
2001
THE PARLIAMENT OF THE COMMONWEALTH OF
AUSTRALIA
HOUSE OF
REPRESENTATIVES
PATENTS AMENDMENT
BILL
EXPLANATORY
MEMORANDUM
(Circulated
by authority of the Parliamentary Secretary to the Minister for Industry,
Science and Resources, the Hon Warren Entsch
MP)
ISBN: 0642 457646
PATENTS AMENDMENT BILL 2001
This Bill amends the Patents Act 1990 to implement improvements to
Australia’s intellectual property system set out in the Government’s
Innovation Action Plan for the Future, Backing Australia’s Ability.
As part of the Plan, the Government has decided to strengthen Australian patents
and make them more certain by changing the novelty and inventive step
requirements of the Patents Act to more closely align these tests with
international standards. This Government commitment stems from recommendations
of both the Intellectual Property and Competition Review Committee’s
report Review of Intellectual Property Legislation under the Competition
Principles Agreement and the Advisory Council on Industrial Property’s
Review of Enforcement of Industrial Property Rights.
The Bill
implements the Government’s decision by: expanding the scope of the
information that an invention can be compared against to ensure it complies with
the novelty and inventiveness tests of the Patents Act; replacing the
requirement that a patent applicant be given the benefit of the doubt in
relation to these tests with a more stringent test; and introducing a
requirement for applicants to provide the Commissioner of Patents (‘the
Commissioner’) with the results of any searches they have had carried
out that may be relevant in determining whether an invention meets these tests.
The amendments are consistent with the requirements in many other countries and
will prevent patents being granted in Australia for inventions that would not be
patentable in those countries.
Although the Innovation Action Plan
statement only encompasses standard patents, most of the amendments to implement
this commitment are also being made to the new innovation patent system to
ensure that these new patents are subject to the same higher standards and are
not less valid or less enforceable patent rights.
The Bill also makes two
minor amendments to bring the provisions of the Patents Act into compliance with
the proposed Patent Law Treaty (‘PLT’), pursuant to
Australia’s possible future accession to that treaty. The PLT is intended
to make it easier for patent applicants to obtain patent rights in a number of
countries by standardising the formality requirements associated with the patent
application process. This will make applying for patents in several countries
easier and cheaper because the rules will be the same in all member
states.
Finally, the Bill also makes a number of minor and technical
amendments to the Patents Act. This includes an amendment to better protect the
interests of third parties where they have begun to use an invention before the
patent owner sought patent protection for that invention.
No additional cost to the Government or to any other person is expected to directly result from these amendments.
1. This clause provides for the Act to be cited as the Patents Amendment Act 2001.
2. This clause provides that for Schedule 1, commencement is on a day to be fixed by Proclamation or immediately after six months from the day of Royal Assent, whichever comes first. Commencement of Schedule 2 is taken to have been immediately after commencement of the Patents Amendment (Innovation Patents) Act 2000.
Clause 3 — Schedule(s)
3. This clause provides that each Act specified in a Schedule is to be amended or repealed according to the relevant provisions of that Schedule. Any item in a Schedule has effect according to its terms.
4. This item deletes the phrase in the patent area from paragraph 7(1)(b) consequential to the amendment of the definition of the expression prior art base (see item 12). A person skilled in the art will no longer be restricted to a person skilled in the art in Australia.
5. This item deletes the phrase in the patent area from subsection 7(2) consequential to the amendment of the definition of the expression prior art base (see item 12). Common general knowledge will no longer be restricted to common general knowledge in Australia.
6. This item amends the wording of subsection 7(2) consequential to the amendments to subsection 7(3) (see item 4).
7. This item inserts a new subsection 7(3) to provide a more flexible test for determining whether an invention involves an inventive step. The amendments will require a higher inventiveness threshold. The new subsection will allow the combination of separate documents, different parts of a single document or of separate documents and any other pieces of prior art information (including acts) where such combination would have been obvious to a person skilled in the art. In line with international standards and subsection 7(5) of the Patents Act (the equivalent provision for innovation patents), the amendments also remove the restriction that the person skilled in the art could be expected to ascertain, understand and regard the information as relevant. The amendments also remove the restriction of a person skilled in the art being a person skilled in the art in Australia.
8. This item deletes the phrase in the patent area from subsection 7(4) consequential to the amendment of the definition of the expression prior art base (see item 12). Common general knowledge will no longer be restricted to common general knowledge in Australia.
9. This item deletes the phrase in the patent area from paragraph 7(5)(b) consequential to the amendment of the definition of the expression prior art base (see item 12). A person skilled in the art will no longer be restricted to a person skilled in the art in Australia.
10. This item replaces the phrase anywhere in the patent area with (whether in or out of the patent area) consequential to the amendment of the definition of the expression prior art base (see item 12). For the purposes of examination and reporting under paragraph 45(1)(c) of the Patents Act, the Commissioner will not take into account information made publicly available only through the doing of an act, whether this act occurred in or out of Australia.
11. This item replaces the phrase anywhere in the patent area with (whether in or out of the patent area) consequential to the amendment of the definition of the expression prior art base in Schedule 1 to the Patents Act (see item 12). For the purposes of modified examination and reporting under paragraph 48(1)(b) of the Patents Act, the Commissioner will not take into account information made publicly available only through the doing of an act, whether this act occurred in or out of Australia.
12. This item replaces the phrase anywhere in the patent area with (whether in or out of the patent area) consequential to the amendment of the definition of the expression prior art base in Schedule 1 to the Patents Act (see item 12). For the purposes of re-examination and reporting under subsection 98(1) of the Patents Act, the Commissioner will not take into account information made publicly available only through the doing of an act, whether this act occurred in or out of Australia.
13. This item replaces the phrase anywhere in the patent area with (whether in or out of the patent area) consequential to the amendment of the definition of the expression prior art base in Schedule 1 to the Patents Act (see item 12). For the purposes of examination of an innovation patent and working out whether the invention does not comply with paragraph 18(1A)(b) of the Patents Act, the Commissioner will not take into account information made publicly available only through the doing of an act, whether this act occurred in or out of Australia.
14. This item replaces the phrase anywhere in the patent area with (whether in or out of the patent area) consequential to the amendment of the definition of the expression prior art base in Schedule 1 to the Patents Act (see item 12). For the purposes of re-examination of an innovation patent and consideration of the grounds of revocation under subsection 101G(3) of the Patents Act, the Commissioner will not take into account information made publicly available only through the doing of an act, whether this act occurred in or out of Australia.
15. This item replaces the phrase anywhere in the patent area with whether in or out of the patent area to expand the definition of the expression prior art base, which is the publicly available information that an invention is compared against to determine whether it is novel and inventive. The amendment removes the restriction limiting information made publicly available through the doing of an act to within Australia. For the purposes of determining novelty, inventive step and innovative step, the prior art base will now include information made publicly available through the doing of an act anywhere in the world.
16. This item provides that the amendments to the Patents Act made by items 1 to 12 above will apply to complete applications filed on or after commencement of Part 1 of this Schedule and to patents granted on complete applications filed on or after commencement of Part 1 of this Schedule.
17. This item amends subsection 45(3) of the Patents Act to require that an applicant for a standard patent must provide the Commissioner with the results of any searches that they have had carried out in relation to the patent application — including search results for any associated application(s) or any corresponding application(s) filed overseas.
18. This item amends subsection 49(1) of the Patents Act to raise the threshold of the test the Commissioner must apply when assessing an invention against the criteria of paragraph 18(1)(b) of the Patents Act (novelty and inventive step). The amendment replaces the existing “benefit of doubt” test with a more stringent test for the Commissioner to apply when assessing an invention against these criteria. The benefit of any doubt will continue to apply to the other matters the Commissioner considers under this subsection, but in making a decision as to whether an application meets the requirements of novelty and inventive step, the Commissioner must now be satisfied that there are no lawful grounds of objection.
19. This item amends subsection 61(1) of the Patents Act to make this provision subject to section 100A. Consequential to the amendments to subsection 97(1) (see item 17), the circumstances under which the Commissioner must grant a patent will now be subject to the new ground for refusal in section 100A (see item 18).
20. This item amends subsection 97(1) of the Patents Act to allow the Commissioner to re-examine an application for a standard patent in the period between acceptance and grant. If, after acceptance of an application, the Commissioner becomes aware of information which may affect the validity of the patent were it to be granted (for example information filed during an opposition which is subsequently withdrawn), the Commissioner can re-examine the application before a patent is granted, rather than having to grant the patent (which the Commissioner believes may be invalid) before being able to commence re-examination. If, as a result of the re-examination, the Commissioner makes an adverse report, the Commissioner will be able to refuse to grant the patent in accordance with the provisions of section 100A (see item 18).
21. This item inserts new section 100A to allow the Commissioner to refuse to grant a patent following re-examination under subsection 97(1) (see item 17). The provision allows the Commissioner to refuse to grant the patent following an adverse report, provided that the Commissioner has given the applicant a reasonable opportunity to be heard and, where appropriate, also given the applicant reasonable opportunity to amend the specification to remove any lawful ground of objection.
22. This item amends section 101D of the Patents Act to require that if an innovation patent is examined, the patentee must provide the Commissioner with the results of any searches that they have had carried out in relation to the patent — including any search results for the complete application, any associated provisional application(s) and any corresponding application(s) filed overseas.
23. This item amends paragraph 101E(a) of the Patents Act to raise the threshold of the test the Commissioner must apply when assessing an invention against the criteria of paragraph 18(1A)(b) of the Patents Act (novelty and innovative step). The amendments are the innovation patent equivalent of those to be made for assessing novelty and inventive step of a standard patent application under subsection 49(1) (see item 15). As with the amendments to subsection 49(1), the benefit of any doubt will continue to go to the patentee for other matters the Commissioner considers under section 101E, but in making a decision as to whether an invention meets the requirements of novelty and innovative step, the Commissioner must now be satisfied that there are no lawful grounds of objection, before issuing a certificate of examination.
24. This item inserts a reference to decisions made under new paragraph 101E(aa) (see item 20) for the purposes of determining the relevant time under subsection 102(2).
25. This item inserts new subsection 102(2B) into the Patents Act to prevent amendment of a complete specification if the patentee (or their predecessor in title) failed to comply with the provisions of subsection 45(3) (see item 14) or section 101D (see item 19). The provision provides that a patentee will not be able to amend the complete specification relating to a patent (innovation or standard) to remove a novelty, inventive step, or innovative step objection if the objection arises as a result of information that should have been provided to the Commissioner under subsection 45(3) or section 101D of the Patents Act, and the patentee (or their predecessor in title) did not give the Commissioner that information.
26. This item amends section 119 of the Patents Act to correct an inconsistency in this provision and maintain the intention of the prior use defence — that the grant of a patent should not prevent any person from continuing to do an act they were legitimately entitled to do before the patent was granted. The amendments provide that the prior use infringement exemption applies if a third party obtains the subject-matter of an invention as a result of a public disclosure of the invention by the patentee and the public disclosure is a prescribed circumstance for the purposes of paragraph 24(1)(a) of the Patents Act.
27. This item repeals paragraph 142(2)(b) of the Patents Act consequential to the amendment of subsection 45(3) (see item 14) and the introduction of subsection 102(2C) (see item 22).
28. This item amends paragraph 143A(c) of the Patents Act consequential to the amendments to section 101E which raise the threshold of the tests for meeting novelty and innovative step requirements (see item 20). The amendment inserts a reference to a decision by the Commissioner under new paragraph 101E(aa).
29. This item inserts new section 143B to make it clear that the Patents Act complies with Article 7(2)(b) of the Patent Law Treaty (‘PLT’). Article 7(2)(b) provides that any person may pay maintenance fees (continuation and renewal fees under the Patents Act). Under the provisions of the Patents Act, a reference to a particular person in connection with the payment of a fee is interpreted to mean that that person is responsible for ensuring that the fee is paid, rather than requiring them to make the fee payment personally. To ensure compliance with Article 7(2)(b) of the PLT, section 143B provides that, for Chapter 13 of the Patents Act, a reference to the payment of a continuation or renewal fee by the patent applicant or patentee does not require that fee to be paid by the applicant or patentee personally—the fee can be paid by any person.
30. This item inserts subsection 223(2A) to bring the Patents Act into compliance with Article 12 of the PLT. The subsection provides that where, despite the due care of the person concerned, a relevant act is not done within time, and the person files an application for an extension of time within the prescribed period, the Commissioner must extend the time for doing the act.
Item 28 — After subsection 223(3)
31. This item inserts new subsection 223(3A) to provide that the time for doing a relevant act can only be extended under subsection 223(2A) after the time period has expired.
32. This item inserts a reference to new subsection 223(6A) into subsection 223(6) to make this subsection subject to the provisions of subsection 223(6A) (see item 31).
33. This item inserts references to subsections 223(2) and (2A) into subsection 223(6) to make it clear that a person can only oppose the grant of application for an extension of time made under subsection 223(2) or (2A).
34. This item inserts new subsection 223(6A) to provide that the Commissioner need not advertise an application for an extension of time for more than three months if the Commissioner is satisfied that the application would not be granted—even in the absence of an opposition. If the Commissioner does not advertise the application, the application cannot be opposed and the Commissioner must refuse to grant the application. Under subsection 223(4) of the Patents Act, the Commissioner must advertise an application for an extension of time for more than three months, irrespective of the Commissioner’s views as to whether an extension is justified. Subsection 223(6A) will allow the Commissioner to advertise an application for an extension of more than 3 months only if satisfied that the applicant has made out reasonable grounds to justify the grant of the extension. This provision will also save third parties from going to the expense of filing an opposition to the grant of an application that the Commissioner does not intend to grant.
35. This item sets out the details of when and under what circumstances the amendments to the Patents Act made by items 14 to 21, 23 to 25 and 27 to 31 above will apply.
36. This item makes it clear that regulations in force for the purposes of any provision of the Patents Act immediately before the day on which Schedule 1 of this Bill commences continue to have effect on or after that day. However, this does not prevent the future repeal or amendment of these regulations.
37. This item is a technical correction that replaces the incorrect cross-reference to paragraph 1(c) in subsection 48(1A) with a reference to paragraph 1(b).
38. This item is a technical correction that replaces the incorrect cross-reference to paragraph 18A(1)(b) in subsection 101B with a reference to paragraph 18(1A)(b).