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Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012]

Schedule 1 Raising the quality of granted patents

Part 1 Main amendments

Patents Act 1990

1  Section 3 (in the list of definitions)

Insert “preliminary search and opinion”.

2  Subsection 7(2)

Omit “in the patent area”, substitute “(whether in or out of the patent area)”.

Note:       The heading to section 7 is altered by omitting “ and inventive step ” and substituting “ , inventive step and innovative step ”.

3  Subsection 7(3)

Repeal the subsection, substitute:

             (3)  The information for the purposes of subsection (2) is:

                     (a)  any single piece of prior art information; or

                     (b)  a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

4  Subsection 7(4)

Omit “in the patent area”, substitute “(whether in or out of the patent area)”.

5  Section 7 (note 2)

Omit “subsection 98(1)”, substitute “section 98”.

6  After section 7

Insert:

7A   Meaning of useful

             (1)  For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.

             (2)  The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.

             (3)  Subsection (1) does not otherwise affect the meaning of the word useful in this Act.

7  Subsection 40(1)

Repeal the subsection, substitute:

Requirements relating to provisional specifications

             (1)  A provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

8  Paragraph 40(2)(a)

Repeal the paragraph, substitute:

                     (a)  disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

                    (aa)  disclose the best method known to the applicant of performing the invention; and

9  Subsection 40(3)

Omit “fairly based on the matter described”, substitute “supported by matter disclosed”.

10  Subsection 43(2)

Repeal the subsection, substitute:

             (2)  The priority date of a claim is:

                     (a)  if subsection (2A) applies to the claim—the date determined under the regulations; or

                     (b)  otherwise—the date of the filing of the specification.

          (2A)  This subsection applies to a claim if:

                     (a)  prescribed circumstances apply in relation to the invention defined in the claim; and

                     (b)  a prescribed document discloses the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

11  Before Division 1 of Part 2 of Chapter 3

Insert:

Division 1A Preliminary search and opinion

43A   Preliminary search and opinion

             (1)  If a complete application for a standard patent has been made, the Commissioner may conduct a preliminary search and opinion in relation to the patent request and specification relating to the application.

             (2)  The preliminary search and opinion must be conducted in accordance with the regulations.

12  Paragraphs 45(1)(a), (b) and (c)

Repeal the paragraphs, substitute:

                     (a)  whether the specification complies with subsections 40(2) to (4); and

                     (b)  whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and

                     (c)  whether the invention is a patentable invention under subsection 18(2); and

13  Subsection 45(1A)

Repeal the subsection.

14  Subsection 49(1)

Repeal the subsection, substitute:

             (1)  Subject to section 50, the Commissioner must accept a patent request and complete specification relating to an application for a standard patent if the Commissioner is satisfied, on the balance of probabilities:

                     (a)  that the specification complies with subsections 40(2) to (4); and

                     (b)  that the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and

                     (c)  that the invention is a patentable invention under subsection 18(2); and

                     (d)  as to the matters (if any) prescribed under paragraph 45(1)(d).

15  After subsection 60(3)

Insert:

          (3A)  If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.

          (3B)  The Commissioner must not refuse an application under this section unless the Commissioner has, where appropriate, given the applicant a reasonable opportunity to amend the relevant specification for the purpose of removing any ground of opposition and the applicant has failed to do so.

16  After subsection 97(3)

Insert:

          (3A)  The re-examination must be carried out in accordance with the regulations.

17  Section 98

Repeal the section, substitute:

98   Report on re-examination

                   On re-examining a complete specification, the Commissioner must ascertain and report on:

                     (a)  whether the specification does not comply with subsection 40(2) or (3); and

                     (b)  whether, to the best of his or her knowledge, the invention, so far as claimed, does not satisfy the criteria mentioned in paragraph 18(1)(a), (b) or (c); and

                     (c)  whether the invention is not a patentable invention under subsection 18(2).

18  Subsection 100A(1)

Repeal the subsection, substitute:

             (1)  The Commissioner may refuse to grant a patent if the Commissioner:

                     (a)  makes an adverse report on a re-examination of the relevant specification under subsection 97(1); and

                     (b)  is satisfied, on the balance of probabilities, that there is a lawful ground of objection to the specification.

19  Subsection 101(1)

Repeal the subsection, substitute:

             (1)  The Commissioner may, by notice in writing, revoke a patent, either wholly or so far as it relates to a particular claim, if the Commissioner:

                     (a)  makes an adverse report on a re-examination of the relevant specification under subsection 97(2); and

                     (b)  is satisfied, on the balance of probabilities, that there is a lawful ground of objection to the relevant specification.

20  Section 101B

Repeal the section, substitute:

101B   Examination of an innovation patent

What the Commissioner must do in examining a patent

             (1)  If the Commissioner decides, or is asked, to examine an innovation patent under section 101A, the Commissioner must:

                     (a)  examine the complete specification relating to the patent to ascertain the matters set out in subsection (2); and

                     (b)  report on those matters.

Matters for examination and report

             (2)  The matters in this subsection are whether:

                     (a)  the specification complies with subsections 40(2) to (4); and

                     (b)  the invention, so far as claimed, complies with paragraphs 18(1A)(a), (b) and (c); and

                     (c)  the invention is a patentable invention under subsections 18(2) and (3); and

                     (d)  the use of the invention would not be contrary to law; and

                     (e)  the patent does not claim as an invention a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; and

                      (f)  the patent does not claim as an invention a process producing such a substance by mere admixture; and

                     (g)  the patent does not contain a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim; and

                     (h)  the patent does not claim an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, where the relevant claim or claims in respect of each patent have the same priority date or dates; and

                      (i)  the complete specification complies with such other matters (if any) as are prescribed for the purpose of this paragraph.

21  Section 101E

Repeal the section, substitute:

101E   Certificate of examination

             (1)  This section applies to an innovation patent if:

                     (a)  after examining the patent under section 101B, the Commissioner decides in writing that he or she is satisfied, on the balance of probabilities, as to the following:

                              (i)  the specification complies with subsections 40(2) to (4);

                             (ii)  the invention, so far as claimed, complies with paragraphs 18(1A)(a), (b) and (c);

                            (iii)  the invention is a patentable invention under subsections 18(2) and (3);

                            (iv)  the use of the invention would not be contrary to law;

                             (v)  the patent does not claim as an invention a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients;

                            (vi)  the patent does not claim as an invention a process producing such a substance by mere admixture;

                           (vii)  the patent does not contain a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim;

                          (viii)  the patent does not claim an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, where the relevant claim or claims in respect of each patent have the same priority date or dates;

                            (ix)  the complete specification complies with such other matters (if any) as are prescribed for the purpose of paragraph 101B(2)(i);

                     (b)  the patent has not ceased under section 143A.

             (2)  If this section applies, the Commissioner must:

                     (a)  notify the patentee and the person who requested the examination (if that person is not the patentee) that the patent has been examined and that a certificate of examination is to be issued; and

                     (b)  publish a notice of the examination having occurred in the Official Journal ; and

                     (c)  issue a certificate of examination to the patentee in the approved form; and

                     (d)  register the issue of the certificate.

             (3)  A decision under subsection (1) is not a legislative instrument.

22  Subsection 101F(1)

Repeal the subsection, substitute:

             (1)  The Commissioner must revoke a patent if:

                     (a)  the patent has been examined under section 101B; and

                     (b)  section 101E does not apply to the patent; and

                     (c)  the patent has not ceased under section 143A.

23  After subsection 101G(1)

Insert:

          (1A)  The re-examination must be carried out in accordance with the regulations.

24  Subsection 101G(3)

Repeal the subsection, substitute:

             (3)  The grounds for the revocation of the patent under subsection (2) are as follows:

                     (a)  that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3);

                     (b)  that the invention, so far as claimed, does not comply with paragraph 18(1A)(a), (b) or (c);

                     (c)  that the invention is not a patentable invention under subsection 18(2) or (3).

25  Subsection 101G(5)

Repeal the subsection.

26  Subsection 101J(1)

Repeal the subsection, substitute:

             (1)  The Commissioner may, by notice in writing, revoke a patent, either wholly or so far as it relates to a particular claim, if the Commissioner:

                     (a)  makes an adverse report on a re-examination of the relevant specification under section 101G; and

                     (b)  is satisfied, on the balance of probabilities, that there is a ground of revocation of the patent.

27  Section 101M

Repeal the section, substitute:

101M   Opposition to innovation patent

                   The Minister, or any other person, may, in accordance with the regulations, oppose an innovation patent that has been certified and seek the revocation of it, on one or more of the following grounds of invalidity, but on no other:

                     (a)  that the patentee is either:

                              (i)  not entitled to the patent; or

                             (ii)  entitled to the patent but only in conjunction with some other person;

                     (b)  that the complete specification does not comply with subsection 40(2) or (3);

                     (c)  that the invention is not a patentable invention because it does not comply with paragraph 18(1A)(a), (b) or (c);

                     (d)  that the invention is not a patentable invention under subsection 18(2) or (3).

28  Subsection 101N(4)

After “satisfied”, insert “, on the balance of probabilities,”.

29  Subsection 102(1)

Repeal the subsection, substitute:

Amendment of complete specification not allowable if amended specification claims or discloses matter extending beyond that disclosed in certain documents

             (1)  An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

                     (a)  the complete specification as filed;

                     (b)  other prescribed documents (if any).

30  Paragraph 102(2A)(b)

Omit “decisions under paragraphs 101E(a) and (aa)”, substitute “a decision under paragraph 101E(1)(a)”.

31  Before subsection 102(3)

Insert:

Amendments of a kind prescribed by regulations not allowable

          (2D)  An amendment of a patent request or a complete specification is not allowable if it is of a kind prescribed by regulations made for the purposes of this section.

32  Subsection 102(3)

Repeal the subsection, substitute:

Section does not apply in certain cases

             (3)  This section does not apply to an amendment for the purposes of:

                     (a)  correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification; or

                     (b)  complying with paragraph 6(c) (about deposit requirements).

33  Section 114

Repeal the section, substitute:

114   Priority date of claims of certain amended specifications

             (1)  This section applies if:

                     (a)  a complete specification has been amended; and

                     (b)  the amendment was not allowable under subsection 102(1); and

                     (c)  as a result of the amendment, a claim of the amended specification claims an invention that:

                              (i)  was not disclosed by the complete specification as filed in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; but

                             (ii)  is disclosed in that manner by the amended specification.

             (2)  If this section applies, the priority date of the claim must be determined under the regulations.

34  Paragraph 114A(1)(b)

Repeal the paragraph, substitute:

                     (b)  the amendment was not allowable under subsection 102(1); and

                   (ba)  as a result of the amendment, a claim of the amended specification claims an invention that was not disclosed by the original specification as filed in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

Note:       The heading to section 114A is altered by omitting “ claims ” and substituting “ specifications ”.

35  Paragraph 143A(c)

Omit “decisions under paragraphs 101E(a) and (aa)”, substitute “a decision under paragraph 101E(1)(a)”.

36  Before paragraph 228(2)(a)

Insert:

                    (aa)  making provision for and in relation to:

                              (i)  the procedures for conducting a preliminary search and opinion in relation to a patent request and complete specification; and

                             (ii)  the reports to be made in relation to the preliminary search and opinion; and

37  Schedule 1

Insert:

preliminary search and opinion , in relation to a patent request and complete specification relating to an application for a standard patent, means search and opinion under section 43A.

38  Schedule 1 (definition of certified )

Omit “101E(e)”, substitute “101E(2)(c)”.



 

Part 2 Balance of probabilities test

Patents Act 1990

39  Paragraph 10(1)(c)

After “is satisfied”, insert “, on the balance of probabilities,”.

40  Paragraph 35(1)(b)

After “satisfied”, insert “, on the balance of probabilities”.

41  Paragraph 36(1)(c)

After “is satisfied”, insert “on the balance of probabilities,”.

42  Subsection 52(2)

After “satisfied”, insert “, on the balance of probabilities,”.

43  Subsection 74(1)

After “is satisfied”, insert “, on the balance of probabilities,”.

44  Subsection 74(3)

After “not satisfied”, insert “, on the balance of probabilities,”.

45  Subsection 103(2)

After “if satisfied”, insert “on the balance of probabilities”.

46  Paragraph 106(1)(b)

After “is satisfied”, insert “, on the balance of probabilities,”.

47  Subsection 106(4)

After “is satisfied”, insert “, on the balance of probabilities,”.

48  Paragraph 107(1)(b)

After “is satisfied”, insert “, on the balance of probabilities,”.

49  Subsection 107(4)

After “is satisfied”, insert “, on the balance of probabilities,”.

50  Subsection 150(2)

After “if satisfied”, insert “, on the balance of probabilities,”.

51  Subsection 151(2)

After “if satisfied”, insert “, on the balance of probabilities,”.

52  Subsection 215(3)

After “is satisfied”, insert “, on the balance of probabilities,”.

53  Paragraph 223(2A)(b)

After “is satisfied”, insert “, on the balance of probabilities,”.

54  Subsection 223(6A)

After “is satisfied”, insert “, on the balance of probabilities,”.



 

Part 3 Application, savings and transitional provisions

55  Application of amendments

(1)       The amendments made by items 2, 3, 4, 6, 8, 9 and 10 of this Schedule apply in relation to:

                     (a)  patents for which the complete application is made on or after the day this Schedule commences; and

                     (b)  standard patents for which the application had been made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

                     (c)  innovation patents granted on or after the day this Schedule commences, if the complete application to which the patent relates had been made before that day; and

                     (d)  complete patent applications made on or after the day this Schedule commences; and

                     (e)  complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

                      (f)  complete applications for innovation patents made before the day this Schedule commences, if a patent had not been granted in relation to the application on or before that day; and

                     (g)  innovation patents granted before the day this Schedule commences, if:

                              (i)  the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

                             (ii)  the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

 (2)      The amendment made by item 7 of this Schedule applies in relation to provisional applications made on or after the day this Schedule commences.

(3)       The amendments made by items 11 and 37 of this Schedule apply in relation to complete applications for standard patents made on or after the day this Schedule commences.

(4)       The amendments made by items 12, 13, 14, 15 and 18 of this Schedule apply in relation to:

                     (a)  complete applications for standard patents made on or after the day this Schedule commences; and

                     (b)  complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day.

(5)       The amendments made by items 16 and 17 of this Schedule apply in relation to:

                     (a)  applications for standard patents, whether the application was made before, on or after the day this Schedule commences; and

                     (b)  standard patents, whether granted before, on or after that day.

(6)       The amendment made by item 19 of this Schedule applies in relation to:

                     (a)  standard patents for which the complete application is made on or after the day this Schedule commences; and

                     (b)  standard patents for which the complete application had been made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day.

(7)       The amendments made by items 23, 24 and 25 of this Schedule apply in relation to innovation patents, whether granted before, on or after the day this Schedule commences.

(8)       The amendments made by items 20, 21, 22, 26, 27, 28, 30, 35 and 38 of this Schedule apply in relation to:

                     (a)  complete applications for innovation patents made on or after the day this Schedule commences; and

                     (b)  complete applications for innovation patents made before the day this Schedule commences, if a patent had not been granted in relation to the application on or before that day; and

                     (c)  innovation patents granted before the day this Schedule commences, if:

                              (i)  the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

                             (ii)  the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

                     (d)  innovation patents granted on complete applications for innovation patents made on or after the day this Schedule commences; and

                     (e)  innovation patents granted on or after the day this Schedule commences, if the complete application to which the patent relates had been made before that day.

(9)       The amendments made by items 29 and 31 to 34 of this Schedule apply in relation to amendments of complete specifications directed or requested to be made on or after the day this Schedule commences if the amendments are in relation to:

                     (a)  patents for which the complete application is made on or after the day this Schedule commences; or

                     (b)  standard patents for which the application had been made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; or

                     (c)  innovation patents granted on or after the day this Schedule commences, if the complete application to which the patent relates had been made before that day; or

                     (d)  complete patent applications made on or after the day this Schedule commences; or

                     (e)  complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; or

                      (f)  complete applications for innovation patents made before the day this Schedule commences, if a patent had not been granted in relation to the application on or before that day; or

                     (g)  innovation patents granted before the day this Schedule commences, if:

                              (i)  the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; or

                             (ii)  the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

(10)     The amendments made by items 39, 41, 45, 48, 49 and 50 of this Schedule apply in relation to:

                     (a)  complete applications for standard patents made on or after the day this Schedule commences; and

                     (b)  complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day.

(11)     The amendments made by item 40, 43, 44, 46, 47 and 52 apply in relation to patents granted on or after the day this Schedule commences.

(12)     The amendment made by item 42 of this Schedule applies in relation to:

                     (a)  complete applications for innovation patents made on or after the day this Schedule commences; and

                     (b)  complete applications for innovation patents made before the day this Schedule commences, if a patent had not been granted in relation to the application on or before that day; and

                     (c)  innovation patents granted before the day this Schedule commences, if:

                              (i)  the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

                             (ii)  the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

(13)     The amendments made by items 51 and 54 of this Schedule apply in relation to applications made on or after the day this Schedule commences.

(14)     The amendment made by item 53 applies in relation to acts required to be done on or after the day this Schedule commences.

56  Transitional provision—approved form

(1)       This item applies to an approval of a form given by the Commissioner under paragraph 101E(e) of the Patents Act 1990 that was in force immediately before the commencement of this Schedule.

(2)       The approval has effect, after the commencement of this Schedule, as if it had been given under paragraph 101E(2)(c) as inserted by this Schedule.