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Focus: Patents - April 2002

Changes to patent law

In brief: The Australian patent system has undergone major changes this month with the commencement of the Patents Amendment Act 2001 and Patents Amendments Regulations 2002 on April 1. In particular, there are two elements of the new legislation which will have an immediate impact on your patent strategy and practice: the Duty of Disclosure and the Grace Period. If you ignore the former or misapply the latter, the consequences could be severe. Special Counsel Chris Bird considers the implications.

Search results - the new duty of disclosure

With a view to ensuring the grant of valid Australian patents, the new legislation requires disclosure of the results of all documentary searches carried out by or on behalf of the applicant relating to:

  • the application;
  • any related provisional application; and
  • any corresponding application filed outside Australia.

This duty continues up until grant.

There are significant consequences if an applicant fails to disclose search results. In particular, claims of an issued patent cannot be amended if the effect of this amendment would be to remove a novelty or inventive step ground of objection arising from the existence of information that should have been disclosed during the granting process. A patent may also be vulnerable to revocation on the basis that the patent was obtained by fraud, false suggestion or misrepresentation if the patentee intentionally concealed search results.

The Australian disclosure requirement is a little different to the United States of America (US) 'duty of candour' which includes a duty to disclose all information material to patentability. In contrast, Australia now requires the disclosure of the results of all documentary searches carried out by or on behalf of the applicant for the purpose of assessing patentability of an invention disclosed in an application. It includes private searches as well as searches carried out by patent offices. Even if such a search revealed no relevant documents, those search results must be provided to the Patent Office. This clearly places a new responsibility on all applicants and their advisors.

Procedural requirements

For a standard patent application, search results must be provided before the later of requesting examination, or six months after completion of the search. The corresponding time limits are stricter in the case of Innovation Patents.

Fortunately, transitional provisions afford some valuable time for compliance, as results that would be due (or overdue) on 1 April 2002 can by filed up until 1 January 2003. Complications may arise, however, if a pending patent is accepted before that date, and search results have not been filed.

The Patent Office does not require copies of the prior art documents, but merely lists of the results of search reports. This applies both to patent and non-patent literature. Sufficient bibliographic information must be provided to enable the examiner to identify each document cited.

'Screening' searches are often conducted on the Internet or on other databases to create a list of 'possible' relevant documents which are subsequently culled to create the final search results. Fortunately, such intermediate results do not need to be reported as they are not viewed as part of the 'results' of a search. It remains to be seen how easy this distinction will actually operate in practice.

A change in practice

With the new duty of disclosure, it is essential when instructing us to provide all search results. We will be reminding you of this duty in our correspondence regarding your pending Australian patent applications.

Additionally, careful thought will need to be given as to how you - and your clients, business partners and consultants - carry out and record in-house searches when assessing the patentability of a new idea. In many cases, it may be better to entrust such prior art searching to your patent attorney, who will be best placed to ensure that the results of such searches are duly filed.

Finally, we do not see this disclosure requirement as likely to substantially add to the burden in obtaining Australian patent protection. The purpose of the change is to ensure that applications are adequately searched and all available prior art is considered to assist in granting valid patents. The disclosure provisions also provide a disincentive for an applicant to conceal relevant prior art, the consequence of which would be a patent that includes invalid claims. We believe that the question of whether failure to disclose is inadvertent or not will be paramount, and this will fall within a court's discretionary powers to decide based on evidence. Nevertheless, it is always better to err on the conservative side and to disclose all known search results.

If you have any questions regarding how you might adapt your practice to best comply with this new duty, please contact any of our patent attorneys.

The new grace period

Prior to the new changes, some prospective patent applications or granted patents have been invalidated because of disclosures made by an inventor or by the applicant before the application was first filed. Furthermore, if a complete application was found not to be entitled to the priority of a provisional patent application - due to the claimed invention not having been adequately disclosed in the provisional - then any disclosure of that invention between the filing of the provisional and complete application could prior disclose the invention and thus invalidate the patent ultimately granted.

In academic circles, there has long been an uncomfortable tension between the desire for early publication of research results and the requirement for maintaining secrecy until at least a provisional patent application has been filed. As a result, there can be a significant gulf - and therefore a significant time delay - between arriving at an invention and being in a position to render that invention in a form suitable for filing. Indeed, as research and development progresses, there can be considerable difficulty in deciding when is the right time to file a provisional application.

To remedy this situation, Australian patent law now offers a 'grace period' to applicants, enabling a complete patent application to be made within 12 months of initial publication or use of the invention by the applicant, or by its predecessors in title, without the publication or use affecting validity of a patent issuing on the application. Previously, grace periods were only available in the case of disclosures made under very limited circumstances.

The new grace period applies to any disclosure made on or after 1 April 2002.

What does this mean in practice?

A grace period has long been available under the US Patent Code, and so patent practitioners operating in the international arena are accustomed to the general concept. In particular, should you find that an employee or a client has already published his or her new idea, all is definitely not lost. As long as a year has not elapsed from that publication, a complete application for the disclosed invention can now be filed in Australia, as well as in selected territories such as the US.

For many inventors, a 12 month grace period will certainly be seen as a good thing. 

So where's the catch?

The greatest danger in relying on the new provision and not filing a patent application before you disclose is the lack of corresponding grace periods across the world. The European Union in particular does not offer such a provision. So disclosing an invention before filing is likely to be fatal to obtaining patent protection in Europe.

Further, the grace period is only able to provide immunity against potentially invalidating self-publications. It is of no help if a third party publishes an invalidating reference before you file your patent application. It is worth noting that experience under the US system suggests that applicants use the grace period primarily as a 'safety net', rather than as a tool to systematically delay filing patent applications. So the message is still 'file as early as possible'.

If you have any questions as to how this new grace period may affect your business strategy or your patent filing programs, please do not hesitate to contact any of our patent attorneys.

For further information, please contact:

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