Raising the Bar regulations published for public consultation
On Friday, 21 September 2012 IP Australia invited public comment in relation to draft amendments to Australia’s intellectual property law regulations which have been necessitated by the Intellectual Property Laws Amendment (“Raising the bar”) Act 2012. The draft regulations are to be published in two stages to maximise the time for public comment, with those released on Friday relating to the following three schedules of the Raising the Bar Act:
Schedule 1 – raising the quality of granted patents,
Schedule 4 – improving mechanisms for trade mark and copyright enforcement, and
Schedule 5 – assisting in the operations of the IP profession.
The regulations published in relation to Schedules 4 and 5 do not appear to include any surprises, with the various regulations relating to customs seizure of goods subject to copyright or trade mark rights, and the incorporation of patent attorney firms being largely as foreshadowed in the Explanatory Memorandum accompanying the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. The same can be said for the amended regulations proposed under Schedule 1, with the exception of the provisions relating to priority entitlement for patents.
Under Section 43(2) of the Patents Act 1990, as amended by the Raising the Bar Act, a claim can derive a priority date from an earlier application which “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”. Accordingly, for applications and patents subject to the provisions of the Raising the Bar Act, priority will only be acknowledged if the relevant priority document provides an enabling disclosure of the claimed invention. Also, under the Raising the Bar Act, the requirement for a claim to be “fairly based” on a disclosure was replaced with a new requirement that a claim must be “supported by matter disclosed”.
Regulation 3.12 currently stipulates that a claim must be “fairly based on matter disclosed in one or more priority documents” for priority entitlement to be recognised, and for this reason it was anticipated that the new regulations would require a claim to be “supported by” the disclosure in the priority document. However, the new regulations relating to the calculation of priority dates do not require a claim to be supported by the disclosure of the priority application. Instead, the new regulations simply mirror the requirement of new Section 43(2); that the priority document must disclose the invention “in a manner that it clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art”. Accordingly, the test for a priority entitlement is an enablement test, not a support/fair basis test.
The deadline for providing comments on the draft regulations is 21 November 2012. The draft regulations are available on IP Australia’s website, which also provides information in relation to the filing of comments.