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Focus: New practice for divisional applications, trans-Tasman examination integration and review of patentable subject matter

6 April 2011

In this issue: our lawyers and patent attorneys look at IP Australia's revised practice guidelines for the examination of divisional patent applications and their implications; a joint NZ/Australian initiative to integrate their respective patent examination services; and the Federal Government's review of the law relating to patentable subject matter.

Revised practice for examination of divisional applications

In brief: IP Australia recently revised its practice guidelines for examination of divisional applications. The aim of the revised divisional practice is to expedite examination of divisional applications, to improve public certainty about the existence and scope of patent rights associated with a particular invention or technology, and has some important implications for applicants. Patent Attorney Dan Wadsworth and Senior Associate Linda Govenlock report.

How does it affect you?

  • IP Australia's revised practice guidelines for divisional applications aim to expedite examination of all divisional applications, in order to improve public certainty regarding the existence and scope of patent rights.
  • If any objections raised against a divisional application were previously raised during examination of the parent application, the Patent Office may set a reduced time limit of 2 months (instead of the standard period of up to 21 months) for an applicant to file a response overcoming those objections. If those objections are not overcome, the Commissioner may take steps to refuse the divisional application.
  • The new guidelines therefore have very important implications for applicants, who will need to give careful thought to the claims they wish to pursue when filing a divisional application in light of the prosecution history of the parent application.

Key features of the revised divisional practice
Expedited examination

IP Australia will now expedite the examination of all divisional applications. A direction to request examination will be issued within about one month of the filing date of a divisional application (for normal applications, this period is currently at least 12 months), setting a six-month deadline to request examination.

Recycled objections

If the divisional application includes claims that:

  • are the same, or substantially the same, as claims considered during examination of the parent application; and
  • result in the same objections being raised, for substantially the same reasons as those objections were raised against the parent case (referred to as recycled objections),

IP Australia will set a deadline of two months from the date of the first examination report within which the applicant must file a response addressing the recycled objections. If the response is not filed within the two-month period, the Commissioner of Patents may:

  • exercise discretion to direct an amendment of the divisional application; or
  • set the matter down for a hearing, with a view to refusing the divisional application.
New objections

If new objections are raised against the claims of the divisional application, which were not raised during examination of the parent application, the standard 21-month period for overcoming the new objection(s) and placing the application in order for acceptance will apply, but only if a response successfully overcoming any recycled objections is filed within two months.

If no recycled objections are raised against the divisional application, the standard 21-month period for acceptance of the application will apply.

Practice tips

In view of IP Australia's revised divisional practice, it is important that applicants give thought to the claims they wish to pursue in any divisional application. We offer the following practice tips:

  • If a divisional application is filed with claims that were considered (and objected to) during examination of the parent application, consider filing a preliminary amendment when requesting examination. For example:
  • If the divisional application was filed in response to a unity of invention objection, claims covered by the parent application should be deleted. Alternatively, the claims should be amended to ensure that they are 'substantially different' from the parent claims.
  • If a preliminary amendment is filed to address prior art that was cited against the parent application, consider including written comments to set out the distinctions over the prior art.
  • Consider filing a request to defer examination for nine months, on the basis of a corresponding application pending in either the US, Canada, Europe (provided the specification is in English), New Zealand or the United Kingdom. Prosecution of corresponding applications in other jurisdictions may progress during the deferral period and provide useful guidance as to suitable preliminary claim amendments, if required.
Summary
  • A number of patent offices around the world have been looking at the issue of divisional/continuation applications, including the EPO and the USPTO. In particular, the consequences of applicants extending pendency of applications (sometimes throughout the maximum possible term of protection for an invention) have been identified as a concern, as such filing strategies significantly reduce certainty for third parties. This change in practice represents IP Australia's current response to such considerations.
  • Whether or not IP Australia applies the revised divisional practice to a divisional application will depend on the claims that are pending when the divisional application is examined. If the divisional application includes claims that are the same, or substantially the same, as claims considered (and objected to) during examination of the parent application, it is highly likely that the revised divisional practice will be applied to the divisional application.
  • A response overcoming any recycled objections must be filed within two months of the date of the examination report, irrespective of whether any 'new' objections have also been raised.
  • When such objections have been overcome, the standard 21-month acceptance period will apply with respect to any further objections raised in the examination report.
  • If a successful response to a recycled objection is not filed within the stipulated two-month period, the Commissioner of Patents may set the application down for a hearing, with the potential result that the application may be refused without consideration of the merits.

Integration of NZ and Australia's patent examination

In brief: In what is considered to be a world first in patent office cooperation, New Zealand Prime Minister John Key and Australian Prime Minister Julia Gillard recently announced a joint initiative to integrate New Zealand and Australian patent examination services. The aim of the proposal is to provide a single patent examination process for corresponding patent applications filed in both countries. Patent Attorney Dan Wadsworth reports.

How does it affect you?

  • An integrated patent examination process is proposed by way of a collaborative initiative by the New Zealand and Australian patent offices to unify the examination process in cases where patent protection is sought in both countries for the same invention.
  • One key driver is the aim of reducing overall prosecution costs for applicants.
  • Until details of the proposed single examination process become available, it is too early to tell whether any substantial cost savings may result, if at all, in view of some notable differences between the patent laws of both countries.

Background

This announcement follows a recent agreement between both countries (known as the single economic market concept) to seek to remove regulatory and trade barriers, with a view to deepening trans-Tasman trade integration.

Potential benefits of the proposed initiative

In substance, the proposal intends that New Zealand and Australian patent applications for the same invention will be examined by the same examiner (selected from one or the other country).

The New Zealand and Australian governments both consider that the integration of the patent examination processes is likely to offer the following benefits to applicants wishing to protect their inventions in both countries:

  • potential savings in patent prosecution costs (namely professional fees) by eliminating duplicate examinations;
  • a faster and potentially more streamlined examination process for corresponding New Zealand and Australian applications; and
  • a more consistent and/or higher quality examination process.

The proposal aims to unify only the examination practices of the two patent offices – it does not extend to any alignment of the patent laws in both countries. Accordingly, New Zealand and Australian patent examiners will continue to grant and refuse applications according to their respective national patent laws.

Implementation

It is intended that the proposed examination process will be effective within three years, and be implemented in two distinct stages. The first stage will see examiners from both patent offices working together, in order to build confidence and identify areas in their current respective examination processes for alignment and simplification. The second stage will see the commencement of the single examination process.

Impact on patent practice

The two governments have stated that there will be no impact on applicants' rights under the proposed system.

Details of how the proposed examination process may operate are not yet available; however, although the intention of the initiative is commendable, it will remain to be seen how the proposal will achieve the above aims, given some notable differences in the patent laws of the two countries. For example, issues of inventive step are not currently considered by the New Zealand Patent Office during examination, but are in Australia. Furthermore, New Zealand is potentially the only country in the world still recognising local novelty requirements when assessing prior art information.

We note that proposed changes to New Zealand's current patent laws are scheduled to be introduced shortly, and, if passed, will have the effect of aligning New Zealand's patent legislation closer to that of most other countries – in particular, Australia's. However, some proposed provisions (notably those concerning patentability of software and methods of medical treatment) will depart from the Australian approach and may therefore present a potential source of difficulty during examination.

It is not clear at this stage whether 'forum shopping' will be possible, whereby an applicant may designate which office will examine a particular application, thereby potentially taking advantage of perceived differences in examination practice and law between the two countries.

Accordingly, at this early stage it is not yet clear whether the single examination procedure will benefit applicants, and in what circumstances. It will be important that any changes do not affect applicants' rights to maximise the scope of protection available for their inventions in both countries.

Review of the law of patentable subject matter

In brief: The Australian Government's Advisory Council on Intellectual Property recently released a final report into its review of the law of patentable subject matter. Patentable subject matter is concerned with the types of inventions for which patents should be granted and the issue has been considered recently (in Australia, and in the United States and elsewhere) in the context of the debates over whether human genes and business methods are patentable inventions. Senior Associate Anthony Selleck looks at the report that includes recommendations that the law should be amended to clarify what should and should not be protectable by patents.

How does it affect you?

  • Wholesale adoption of the report's recommendation may represent a significant change in Australian law, resulting in a possible narrowing of the types of inventions for which patents will be granted in Australia.
  • Patent filing strategies and drafting practices, particularly for innovators in new technologies, may need to be re-assessed in light of any legislative developments which arise out of the recommendations of the report.

The current position

Currently, under the Patents Act 1990 (Cth), an invention will constitute patentable subject matter if it is a 'manner of manufacture' within the principles that have developed over a long period for the application of the Statute of Monopolies 1623. Deferring to common law principles, rather than an express statutory formula, makes the patentability test a flexible one that is amenable to changes in both the social and technological landscapes. However, according to some, that same flexibility is actually a disadvantage, as, in the absence of any statutory guidance, the true limits of patentability are ambiguous and uncertain.

The Australian Council on Intellectual Property (ACIP) review was motivated by these perceived uncertainties, with ACIP being asked to consider the issue of the appropriateness and adequacy of the 'manner of manufacture' test as the threshold requirement for patentable subject matter under Australian law.

ACIP recommendations

The key recommendations of the report include:

  • codifying the established principles of patentability by amendment of the Patents Act, so that an invention must be an artificially created state of affairs in the field of economic endeavour;
  • maintaining the current exclusion from patentability of human beings and biological processes for their generation – but not introducing any further specific exclusions;
  • introducing a general exclusion from patentability of inventions whose commercial exploitation would be wholly offensive to the Australian public;
  • including a statement of objectives in the Patents Act 1990 (Cth) to outline its purpose so that any test for patentable subject matter must support these objectives: and
  • changing the standard of proof required by the Commissioner of Patents when applying the test for patentability by applying a 'balance of probabilities' approach to all aspects of examination.
Next steps

The Australian Government is in the process of developing its response to the report. The timing of the Government's response may coincide with the findings of the Australian Senate Legal and Constitutional Committee's inquiry into gene patents and the debate of the Patent Amendment (Human Genes and Biological Materials) Bill 2010, which is currently before the Federal Parliament. That Bill seeks to amend the Patents Act to expressly exclude from patentability biological materials.

Summary

The recommended codification of what comprises patentable subject matter would be a significant change in Australian patent law. Although the recommendation is based on the statement of law currently applied by the courts (as developed in the NRDC case and subsequent decisions), it will be necessary to see precisely how the definition is worded before its potential effect can be assessed. Further, it will be interesting to see how the recommended statement of objectives of the Patents Act is crafted, as this may also have an important impact on the application of this threshold test for patentability.

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