The Intellectual Property Laws Amendment (Raising the Bar) Act has passed into law and practitioners will benefit from some certainty around the implementation of the provisions of the Act
After many months of delay, the Raising the Bar Bill has been signed into law by the Governor General. IP Practitioners will benefit from some certainty around the implementation of the provisions of the Bill. Most provisions come into effect in April 2013, although the research exemptions are now in force (see accompanying article)
Here is a re-cap of the provisions:
Inventive step
  • The territorial limitation in respect of common general knowledge will be removed.
  • The requirement for a prior art reference to be "information that a skilled person…could, … be reasonably expected to have ascertained, understood, regarded as relevant…" has been removed.
  • The complete specification should disclose a "specific, substantial and credible use" for the invention.

  • Provisional specifications will be required to have a level of disclosure almost the same as for a complete specification, but they need not disclose the best method of performing the invention.
  • The complete specification must "disclose the invention in a manner which is clear enough and complete enough for an invention to be performed by a person skilled in the relevant art. The subject matter of a claim should be enabled across its "whole width". The best method of performance of the invention must still be disclosed.
Fair basis
  • The current fair basis requirement is to be replaced with a support requirement:
    1. There must be basis in the description for each claim; and
    2. The scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.
  • The support requirement will also apply in assessment of the priority entitlement.
Regulatory exemption
  • Use of a patented invention for obtaining regulatory approval will be exempt from infringement.
Experimental use exemption
  • A broad experimental use exemption will be introduced.
Deadline for filing divisional applications
  • The deadline for filing divisional applications or for converting existing applications to divisional status will be restricted to 3 months after publication of acceptance.
  • Privilege afforded to clients of patent and trade marks attorneys will be extended to the clients of foreign patent and trade mark attorneys, and will extend to communications with third parties.
  • Under the new provisions a patent will not be considered invalid merely because it was granted to the wrong person.

Your FB Rice Attorney will be delighted to discuss the Act in greater detail, and we will issue regular updates on the progressive implementation of the Act