17 August 2009

IP Australia has released two more discussion papers of reform proposals:

1. Flexible search and
   examination

   Flexible Search and Examination (patents)

2. Streamlining the patent process

The Streamlining paper has some ambitious goals:

• Removing unnecessary differences in law between Australia and overseas jurisdictions. This would help reduce the cost to applicants of re-drafting claims to meet the various requirements of each jurisdiction. It would also reduce the potential for errors to occur as a result of the applicant being unaware of such differences.
• Simplifying and modernising systems for processing patent applications. These include processes associated with amending details relating to patent applications, processing Patent Cooperation Treaty2 (PCT) applications entering the ‘national phase’, and accessing or restricting access to information relating to a patent.
• Remedying other procedural problems within the patent system..

In relation to ‘harmonising’, proposals include:

Interpretation of the prior art—For the purposes of determining novelty, citations are to be construed at the priority date of the claims under examination rather than the date of publication of the citation.

Whole of contents citation—For the purposes of determining novelty, only the information in the citation at its filing date is to be taken into account.

A claimed product will no longer be patentable merely because it is produced by a patentable process or method.

If the product per se in a product-by-process claim is unpatentable in light of the prior art base, the claim to the product will be unpatentable even though the disclosed product was made by a patentable process.

The claims shall not, except where necessary, rely on reference to the description or drawings.

When an application includes an omnibus claim, an examiner is likely to object to the claim unless it is apparent from the face of the specification that it is necessary for the claim to refer to the description or drawings in order to define the invention.

On flexible examination, proposals include:

• An early search and opinion would provide an early indication of the validity of a patent (section 3.1). This would also provide the public and business with earlier certainty as to where they have freedom to operate.
• The introduction of various levels of examination. This would ensure that the fee charged to applicants for examination of a patent application would reflect the extent to which the examination relies on work done by other offices (section 3.2).
• An option for third parties to request examination of an application. This would provide third parties with an opportunity to obtain an earlier determination of a patent application that potentially impacts on their commercial interests (section 3.3).
• “adjustment” of “some” examination timeframes

Get your submissions in by 16 October 2009.

Download the papers (pdf) or (doc) here.