Raising the Bar Act 2012 is here: summary of the key changes now enacted

Raising the Bar Act 2012 is here: summary of the key changes now enacted

Raising the Bar Act 2012 is here: summary of the  key changes now enacted

Today marks the commencement of The Intellectual Property Laws Amendment Act 2012. This is the most significant amendment to Australia’s intellectual property laws since the Patents Act 1990 was enacted. As of today the Act raises the requirement for patentability (particularly inventive step) and the description requirements for patent specifications, it changes trade mark opposition case management, enforcement and customs siezure provisions. Below is a summary of the key changes now enacted.

Key changes for patents

There will be shortened time periods for requesting examination and for securing acceptance of a patent application. The period for requesting examination following the issuance of a Direction to Request Examination will be reduced from 6 months to 2 months and the previous 21 month period within which an application must be accepted (following issuance of the first examination report) is now 12 months. As patent examiners will have greater scope to maintain objections under the new law it is likely to be necessary for examination issues to be argued at a hearing more often than previously. Due to the shortened acceptance period it will be important for applicants to progress examination quickly to allow for time for objections to be resolved and for hearings to take place.

Key changes for trade mark opposition case management


The period to file a Notice of Opposition and the period to file evidence in reply has been shortened from 3 months to 2 months. It is no longer possible to obtain an extension of time to file a Notice of Opposition on the basis that further time is required to undertake genuine research or on the basis of negotiations with the applicant. It will now be more difficult to obtain extensions of time to file evidence and extensions will only be allowed if a party has acted promptly and diligently at all times throughout the period.

Notice of opposition

A Notice of Opposition now comprise two documents:

  • A Notice of Intention to Oppose; and
  • A Statement of Ground of Particulars due one month from the filing of the Notice.

If grounds are not sufficiently particularised then the Registrar has the power to amend the Statement to remove certain grounds or to dismiss the opposition outright. Amendments to the Statement will only be allowed if the Registrar is satisfied that the amendment relates to information which the opponent could not have reasonably have known at the time of filing the Statement.

In a positive development, once the Statement of Ground of Particulars is filed, deemed adequate, then the applicant must file a Notice of Intention to Defend the opposition otherwise the application will lapse.

Once the Statement of Ground of Particulars is filed, it will be open to the parties to request a cooling off period of six months which may be extended once by six months.

Key changes to enforcement

The Act introduces new summary offences which have lower thresholds of fault and lower penalties. The maximum penalty for indictable offences is increased and falls more in line with other IP legislation. In addition, it will now possible to obtain additional damages in trade mark infringement proceedings. It is also now possible to appeal a decision of the Registrar to the Federal Circuit Court.

Key changes to customs seizure provisions

The onus is now on the importers of seized goods to make a claim for the release of the goods if they wish to have them returned. This is a significant change as under the previous system it was often difficult to track down counterfeit importers. It is hoped importers of counterfeit product will now simply allow the product to be impounded by customs. This will mean that trade mark owners will often not have to do anything to ensure counterfeit goods never get on the market (thus cutting enforcement costs). The Act also gives Customs increased powers to provide contact details for the importer and exporter of the seized goods and allows for inspection of the goods.

For more details on the Raising of the Bar Act 2012 please visit www.davies.com.au/raisingthebar