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Bio Technology : October 2009
42 Australasian BioTechnology Volume 19 • Number 3 • October 2009 AusBioFEATURE Faster', 18 June 2009, limits patent oppositions; (v) 'Resolving Trade Mark Opposition Proceedings Faster', 18 June 2009, limits trade mark oppositions; (vi) 'Flexible Search and Examination', 17 August 2009, proposes earlier patent searching, more searching options, and a reduced time for overcoming objections; and (vii) 'Streamlining the Patent Process', 17 August 2009, includes a broad variety of proposals claiming to "simplify" IP Australia's patent application, examination and grant procedures. Explicit exemptions to infringement, including experimental exemptions In relation to the proposed exemptions to infringement for experimental use, specific exemptions are proposed for acts performed, 'on a patented invention', for testing a claim, and for seeking an improvement to the invention. 'Testing' a claim relates to testing the validity of a patent, determining the scope of the patent claims, and determin- ing whether an act or product infringes a claim. Seeking an improvement to the invention is intended to be limited to 'research use' of the invention, ie non-commercial exploitation. IP Australia also proposes an exemption to infringement for acts that are solely for the purpose of obtaining information for regulatory approval under Australian law, or under the law of any other country that regulates the manufacture, construction, use or sale of the patented invention. Pres- ently, this exemption exists only in relation to pharmaceutical patents. IP Australia mentions that reports by the Australian Law Reform Commission (ALRC) and the Australian Advisory Council on Intellectual Property (ACIP) have recommended the inclusion of explicit exemptions to infringement. These reports include detailed treatment of the issues and are available on the ALRC and ACIP websites. It appears, however, that the current proposed amendments differ substantially from these recommendations. For example, ACIP's recommendation for experimental use was drafted in light of the general safeguard against exemptions to in- fringement under Article 30 of the international Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Increased requirements for patent disclosure A patent specification must contain sufficient disclosure to support each patent claim. In Australia, 'full description' requirements are met when a skilled person can produce something within each claim without 'new inventions or additions or prolonged study of matters presenting initial difficulty'. IP Australia alleges that the US, Europe and Japan require the specification to enable a skilled person to produce embodiments across the full scope of the invention claimed. IP Australia proposes to introduce descriptive support requirements which, they contend, are analogous to those in other jurisdictions for determin- ing the validity of a claim, and the claim's entitlement to a priority date. These new descriptive support requirements would include that the whole scope of the claimed inven- tion be enabled and that the description provide sufficient information to allow the skilled addressee to perform the invention without undue experimentation. These changes would greatly increase the amount of in- formation required in a patent application to support broad claims, especially in the so-called 'unpredictable arts', such as pharmaceutical research. Increased requirements for inventive step IP Australia proposes to 'raise the bar' for inventive step by removing two requirements used to establish what is background information used to assess an inventive step: that the common general knowledge be limited to knowl- edge in Australia; and that a person skilled in the art be reasonably expected to find a prior art document. IP Aus- tralia also proposes to require that obviousness includes an invention being 'obvious to try'. Acceptance of foreign patents rights without local substantive examination In the 'flexible' paper, IP Australia proposes that applicants with granted foreign patents be granted corresponding patents in Australia 'automatically'; that is, there would be no substantive Australian examination of these ap- plications. This may lead to Australia becoming a 'rub- ber stamp' jurisdiction, where foreign applicants can be automatically granted broad patent rights of questionable validity. What is happening to these proposals? Submissions in response to the 'exemptions' and 'balance' papers have been made by AusBiotech, the Institute of Patent and Trade Mark Attorneys of Australia (IPTA), the Law Council of Australia, and FICPI Australia. Submissions to the 'divisional' and 'oppositions' papers were due on 17 August 2009. Submissions to the 'streamlining' and 'flexible' papers are due on 16 October 2009. For more information, please contact Scott Carpenter at AusBiotech, or Michael Caine (Partner) and Sam Mickan (Patent Attorney) at Davies Collison Cave. Copies of the reform papers are available from IP Austra- lia's website: www.ipaustralia.gov.au/resources/news_new. shtml.