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Focus: 'Raising the Bar' – consultation outcomes

25 January 2013

In brief: IP Australia has released the outcomes of consultation on draft regulations that will give effect to important changes to the intellectual property system that will come fully into force this year. The strong focus on tightening examination and opposition procedures has largely been maintained, despite stakeholders' concerns that some of the proposed regulations are too restrictive and timelines are unreasonably short. Partner Chris Bird and Senior Associate Linda Govenlock report.

How does it affect you?

  • If, as expected, the draft regulations are passed without further substantive change, applicants and their agents will need to act promptly to meet the new timeframes and procedures proposed by IP Australia. Most notably:
    • from 15 April 2013, the timeframe for requesting examination in response to an official direction will be shortened to two months;
    • the timeframe for securing acceptance of a patent application for which a request for examination is filed on or after 15 April 2013 will be reduced to 12 months; and
    • the conduct of oppositions has been revised to streamline procedures and to make it more difficult to secure extensions of time for filing evidence.

Introduction

Significant changes to Australia's IP system are due to come into full effect on 15 April 2013, with the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). IP Australia has released the outcomes of consultation on the draft regulations that will give effect to the Raising the Bar Act.

We summarise below some of the most significant aspects of the draft patent regulations.

Patent examination

Timeframe to request examination

The period for responding to a direction from the Commissioner to request examination has been reduced from six months to just two months. As a result, patent applicants and their agents will need to act promptly once a direction to request examination is issued.

Preliminary search and opinion

The draft regulations initially proposed a compulsory preliminary search and opinion (PSO) be carried out for all non-convention applications for which no previous search had been conducted, with a search fee of A$2200. In response to feedback from stakeholders that a compulsory PSO would particularly disadvantage small-to-medium Australian entities, IP Australia has revised the draft regulations to allow applicants to voluntarily request a PSO as an optional step.

Search fee

Under the draft regulations, a search fee will be payable for complete applications undergoing examination for which no search (eg a search conducted by a foreign patent office on a corresponding application) is available at examination, reflecting IP Australia's strong reliance on searches conducted by foreign patent offices. Applicants will be notified if a search fee is payable. In response to feedback from stakeholders IP Australia has reduced the fee to A$1400 (from a proposed A$1710).

Acceptance period

For applications for which a request for examination is made on or after 15 April 2013, the period for gaining acceptance of the application has been reduced from 21 months to 12 months from the date of the first examination report. IP Australia's view is that '12 months is a significant period of time to consider and deal with any issues that arise' during examination. Nevertheless, the reduced period for resolving all objections in the shortened period places some pressure, on applicants and examiners alike, to deal promptly with applications once examination has commenced.

Formalities

Until recently, applicants were required to file a notice of entitlement before acceptance of an application. This requirement was recently replaced with a 'statement of entitlement' to be made when an application is filed. In response to feedback, the statement of entitlement will now not be required until examination is requested.

In a positive step, changes to a patentee's name will no longer be required to be advertised in the Official Journal of Patents before being recorded in the Register of Patents. However, changes in ownership – eg recordal of assignments, licences, etc – will still be advertised for opposition purposes.

Oppositions

Under the draft regulations the conduct of patent oppositions will now vary according to whether the opposition is 'substantive' or 'procedural' in nature. In addition, IP Australia is taking a more active case management role and parties will no longer be required to serve the other side with copies of documents that have been filed in opposition matters.

Substantive oppositions – validity, extensions of term
Notice of opposition

The timeframe for filing a notice of opposition in relation to 'substantive' matters – eg opposition to the grant of a patent or extension of patent term – remains three months from the date that acceptance of the application or allowance of the extension of term is advertised in the Official Journal of Patents.

Opposition statement

The deadline for filing an 'opposition statement' setting out the grounds and relevant facts and circumstances remains unchanged: three months from the date that the notice of opposition is filed. In a positive move, a new requirement aimed at facilitating the progress of oppositions is that the opposition statement must be accompanied by a copy of any non-patent document(s) relied upon by the opponent.

Evidence and extensions of time

The initial timeframe for filing evidence in support and evidence in answer is still three months; however, the initial timeframe for filing evidence in reply has been shortened to two months.

The draft regulations also introduce a more rigorous test for parties to be granted an extension of time to file evidence. The existing provisions lie heavily in favour of extensions of time being granted. However, under the new regulations, the party requesting the extension will need to satisfy the Commissioner either that it 'has made all reasonable efforts to comply with all relevant...requirements' and 'despite acting promptly and diligently at all times' is unable to file evidence within the relevant period; or that there are exceptional circumstances that warrant the extension. The Commissioner will then determine the period of extension that is deemed appropriate.

In a rather controversial move, these new standards will apply to all pending oppositions currently before the Patent Office, as well as to new oppositions commenced on or after 15 April 2013. IP Australia has expressly rejected stakeholders' concerns that this could disadvantage a party involved in an ongoing opposition if the other party has had the benefit of the existing provisions, but preparation of its evidence will now be subject to the new, stricter, regulations.

Hearings

Under the draft regulations, the Commissioner will have the discretion to decide whether an oral hearing will be conducted. We expect that an oral hearing to determine substantive oppositions will continue to be set.

Procedural oppositions – extensions of time, amendments, grant of licence
Notice of opposition

The timeframe for filing a notice of opposition in relation to 'procedural' matters – eg oppositions to extensions of time, amendments, and grant of a licence – will be set at two months from the date of advertisement of the relevant act.

Opposition statement

An opposition statement setting out the grounds and relevant facts and circumstances must be filed within one month of the notice of opposition and must be accompanied by a copy of any relevant non-patent document(s) relied upon.

Practice and procedure

The Commissioner has been given a broad discretion to 'decide the practice and procedure to be followed in a procedural opposition'. We anticipate that such oppositions will be generally dealt with on the basis of written submissions, rather than oral hearings.

Conclusion

IP Australia has confirmed that the amended regulations will be released before 15 April 2013, and preferably at least a month before this date, although the actual release date is not yet known. It seems unlikely that further substantive changes will be made to the draft regulations and we therefore expect the changes summarised above will be included when the regulations are released.

While the outcomes from this consultation process are very useful, it will be necessary to await the exact wording of the regulations to evaluate precisely how the new system will work. IP Australia is clearly seeking to streamline the examination and opposition procedures, and the onus will be on patent applicants and their agents to ensure that the more stringent practice requirements under the Raising the Bar Act are met.

Please contact us if you have any questions about these draft regulations or any other aspect of Australia's Raising the Bar Act.

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