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Higher patentability threshold in Australia from 15 April 2013

Date: 16 December 2012
Author: FB Rice
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Changes

From 15 April 2013, higher standards will apply to the assessment of patentability in Australia as a result of the "Raising the Bar" Act 2012.  The higher standards will apply to major aspects of patentability including inventive step, utility and written description and will take effect for all applications for which examination is requested on or after 15 April 2013.

What this means

For any of your patent applications pending in Australia for which a request for examination has been filed before 15 April 2013, the existing, lower standards for patentability will apply during examination and any post-grant invalidity action, which should make a patent granted on the application less vulnerable to invalidation.

Possible action

To take advantage of existing patentability standards, we recommend that you consider instructing us to take possible early action in relation to your patent portfolio.

Standard Australian applications

For any applications currently pending in Australia, for which the deadline for filing a request for examination is on or after 15 April 2013, consider instructing us to file the request for examination before 15 April 2013.

PCT applications

For any pending PCT applications, for which the deadline for Australian national phase entry is on or after 15 April 2013, consider instructing us to enter the application into Australia with an accompanying request for examination before 15 April 2013.

Provisional applications

For pending provisional or national applications that have a deadline for completion on or after 15 April 2013, consider instructing us to file a complete or convention application in Australia with an accompanying request for examination before 15 April 2013.

Divisional applications

If you are planning to file a divisional application from any pending Australian application, and the deadline for filing the divisional application is on or after 15 April 2013, consider instructing us to file the divisional application with an accompanying request for examination before 15 April 2013.

Further advice

If you wish to take action in relation to your patent portfolio based on the discussions above, or you are unsure whether to take action and would like to discuss this further, please contact your usual FB Rice advisor.

 
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