Raising the Bar: what you need to know
It is not long before commencement on 15 April 2013 of most provisions of The Intellectual Property Laws Amendment (Raising the Bar) Act 2012. This is the most significant amendment to Australia’s intellectual property laws since the Patents Act 1990 was enacted and now is the time to ensure you are ready to deal with the impact of the new law.
New requirements for patent applications
The Act raises the requirements for patentability (particularly inventive step), and the description requirements for patent specifications, for all applications filed from 15 April 2013, and for patent applications filed prior to that date if an examination request has not been filed by 12 April 2013.
Preparing for raising the bar commencement
To ensure that patent applications are subject to the current, more lenient patentability and description requirements, patent applicants can take the following actions by no later than Friday, 12 April 2013.
- Request examination of any pending patent applications.
- Enter the national phase or file a complete patent application (as opposed to a provisional application) in Australia with an examination request.
- File any divisional applications required in view of lack of unity objections or to cover separately disclosed inventions with a request for examination.
- If examination will not be requested, consider amending pending applications to include additional description or examples, or to recite a specific, substantial or credible use, as required under the new law.
Changes to examination request and acceptance periods
You will need to ensure that you are ready to deal with shortened time periods for requesting examination and for securing acceptance of a patent application after commencement of the new law. From 15 April 2013 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 current 21 month period within which an application must be accepted (following issuance of the first examination report) will be reduced to 12 months.
As patent examiners will have an improved ability 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 is currently the case. In view of the shortened acceptance period it will be important for applicants to progress examination quickly to allow time for objections to be resolved and for hearings to take place.
Changes to Trade Mark oppostion case management
There are significant changes to opposition procedures, the most significant of which are:
The period to file a Notice of Opposition and the period to file evidence-in-reply have been shortened from three months to two months. The ability to obtain an extension of time to file Notice of Opposition on the basis that further time is required to undertake genuine research or on the basis of negotiations with the applicant, has been removed. Moreover, it will be more difficult to obtain extensions of time to file evidence and this 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 will now comprise two documents:
- A Notice of Intention to Defend; 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. The ability to later amend the Statement is limited and amendments will only be allowed if the Registrar is satisfied that it 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 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 more by six months.
The Act introduces new summary offences which have lower thresholds of fault and lower penalties. The maximum penalty for indictable offences has also been increased to fall more in line with other IP legislation. In addition, it will now be possible to obtain additional damages in trade mark infringement proceedings.
The onus has shifted to the importers of seizured 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 current system it is often difficult to track down counterfeit importers . As a result of the changes it is hoped importers of counterfeit product will simply allow 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 seizured goods and allows for inspection of seized goods.
On the minus size time limits for taking action have been reduced (so they are no longer TRIPS compliant).