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New Patent Bill Raises the Inventive Step Bar

The Patents Amendment Bill 2001 presently before Parliament would significantly increase the difficulty of defending a standard patent against attack on the ground of lack of inventive step (obviousness).

The principal effects of the Bill, if it proceeds in its present form, will be to:

  • Remove the limitations presently in the Patents Act, which require that the "common general knowledge" against which inventive step is judged, be the common general knowledge which existed in Australia before the priority date. Inventive step would henceforth be judged against common general knowledge as it existed anywhere before the priority date.
  • Broaden the category of prior art which can be combined with common general knowledge in an obviousness attack. Presently the Act limits such prior art to that which the person skilled in the art would be reasonably expected to "have ascertained, understood and regarded as relevant to work in the relevant art" in Australia. This restriction is removed.
  • Broaden the test for determining whether information from two or more sources can be combined for the purpose of attack on the ground of obviousness. Presently the Act requires such a combination to be a combination of "related documents", which the person skilled in the art would have regarded as a "single source of information". The Bill removes those limitations and allows lack of inventive step to be found based on a combination of pieces of information if it would have been obvious to the person skilled in the art to combine the pieces of information.

The removal of the geographical restriction on the common general knowledge will eliminate the apparent conundrum which is faced at present, where one may find that there in fact was no person in this country skilled in the particular art at the priority date.

On the other hand, there may be some misgivings as to the likely effect of the second and third points listed above. Will these usher in that air of unreality which practitioners associate with US practice? Certainly the amended provisions would encourage the ex post facto mosaicing of prior art.

The Bill provides that these changes will have effect in relation to complete patent applications lodged after the date of commencement.

Grace Period

The Bill does not provide for the expected introduction of a "grace period" whereby patent applications are protected against self-publication or use. We understand that this is intended to be introduced by way of regulation, to come into effect at the same time as the Bill.

Status of the Bill

The Bill, and submissions by the Institute of Patent & Trade Mark Attorneys and others, have been considered by the Senate Economics Legislation Committee which reported on 10 August. The majority government members of the committee recommended the passing of the Bill by the Senate. It is possible that amendment may be sought by the other political parties.

We expect that at least six months notice will be given before the Bill comes into effect, and we will keep you advised of progress.

If you would like a copy of the Senate committee report, let us know and we will email it to you.

Halford & Co.

August, 2001

Patent and Trade Mark Attorneys - Intellectual Property Specialists
 Halfords IP, Level 7, 1 Market Street, Sydney, NSW, 2000, AUSTRALIA T: +61 2 9264 8388 | F: +61 2 9264 1810