Australia’s Raising The Bar – Action Alert to Australian Patent Applicants

Most provisions of The Intellectual Property Laws Amendment (Raising the Bar) Act 2011 are due to come into effect on 15 April 2013 (commencement date). The Act has significant implications in that patent applications will soon be subject to higher patentability standards. The Act aims to ensure that granted Australian patents are of a higher quality, and the practical implication for applicants is that Australian patents will soon become more difficult to obtain.

Depending on what stage of the patent application process you are at, there are practical actions you can take prior to 15 April 2013 if you do not want your application to be subject to the raised requirements:

About to file an Australian patent application

Instead of filing a provisional application, file a complete application and request examination before 15 April 2013.

An applicant of an Australian provisional application

File an Australian complete application and request examination before 15 April 2013

Considering filing a PCT application from a foreign priority application

File an Australian convention application and request examination before 15 April 2013

An applicant of a pending PCT application

Enter Australian national phase and request examination before 15 April 2013

An applicant of a yet un-examined Australian application

Request examination prior to 15 April 2013, whether or not a direction to request examination has issued.

If you are considering modified examination, a request for modified examination must be filed before the commencement date. Modified examination will no longer be an option after commencement of the Act. Similarly, if examination is to be deferred, a request for deferral should be filed at the same time as requesting examination, because deferral requests filed after the commencement date will be subject to the discretion of the Commissioner of patents.

Thinking of filing a divisional application

Whether this is to overcome a unity of invention objection in examination or as strategy for an opposed application, file any divisional with an examination request prior to 15 April 2013.

The applicant of an opposed application

After the commencement date, it will no longer be possible to file a divisional application on an opposed application. File the divisional application with an examination request prior to 15 April 2013. Similarly, if the intention is to progress a divisional application and withdraw the opposed application, consider doing so prior to commencement as withdrawal of the opposed application will only be possible with the consent of the Commissioner of patents.

Thinking of making changes to my patent application

After 15 April 2013, it will not be possible to add matter to a patent specification. Give serious consideration to making changes, such as inserting additional examples or Figures, prior to the commencement date.

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