Australian Patent System – New Rules 4/15/13

What’s Up Down Under?

For any US inventor or entrepreneur with business interests in Australia, April 15 2013 is not merely Tax filing day – it is also the date of an important change in Australian Patent Law.

Bowing to the pressures of globalization, Australia is in the process of harmonizing its Intellectual Property Laws to conform more closely to the rest of the world.

 Australia is expected to remain the land of strange, unique animals like the Bonzer B’s who, dressed only in strides, yabber on about footie while downing turps, and, though their cook is as busy as a cat chasing mice, ask her “Dijabringatinny?” (Google Translation: Australian to English : splendid chaps who, dressed only in trousers, converse about Australian football rules while imbibing alcohol, then, oblivious to the fact that their spouse is extremely busy, callously ask her “Did you bring a can of beer?”

After April 15th, however, its patent laws may no longer seem as quaint. Gone will be the ability to amend the specification somewhat flexibly after filing, to have the claims exceed the scope of the specification and for only an outline description of the claims to be in the specification.

In will be a new definition of inventive step under which general knowledge anywhere in the world will be taken into account.  And, like the rest of the world, Australian inventors will now be required to provide a clear and complete description to enable the invention and the scope of their claims may not exceed what they describe in the specification. The specification will no longer be allowed to be amended after filing and must show a ‘specific, substantial and credible use’ of the invention.

The modified examination option will be abolished. This was a brief examination of the formalities that could occur if an equivalent patent has been issued in the US, Canada or EPO member countries.  Instead, the Patent Prosecution Highway may be used in such circumstances to streamline the examination process.

While the changes may reduce the diversity of the Global IP eco-system, it will make Australian IP law more understandable to outsiders, resulting in a less colorful, but more certain world.

An important point to note is that the new law will apply to all applications on which the request to examineis not filed before April 15th, not just to applications filed after that date.    As the current Australian law allows up to 5 years from filing an application to filing a request for examination, this means that the new laws may apply to Australian applications filed as far back as 2008 unless appropriate action is taken.

So, if you do wish to obtain the coverage of the old system, both applications and requests to examine must be filed in the Australian Patent Office before the 15th of April. Given the large time difference between the US and Australia, and that they are ahead of us, filings and requests to examine will need to be done by the 14th at the very latest to ensure that the old laws will apply.

For questions on the new Australian law, contact us at hello@gearhartlaw.com or at (908) 273 0700.

For questions on Strine – the Official Language of Australia – go to http://j.mp/ZSOPYE

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