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Australian IP law updates

Firm updates & Legal developments

Raising the bar - one year on

It has now been a year since the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came fully into force in Australia.  I well recall this day last year, and the sense of relief that one of the busiest periods ever for Australian patent attorneys (certainly in my career) was finally over!

I thought it may be worth reflecting on how patent practice in Australia has changed over the past year, but this will be a relatively brief blog because, in short, we still haven’t really felt the effect of the new laws!

As predicted, IP Australia was inundated with new filings and requests for examination pre-15 April 2013 (so that the old laws would apply to those patent applications).  IP Australia have, however, recently indicated that they are getting on top of things and will shortly re-commence directing applicants of pending patent applications to request examination (under the new laws).  We should therefore start to see more Examiner’s reports applying the new laws in the next six or so months.

I have personally only seen one Examiner’s report issued under the new laws, and was quite surprised by the rigour with which the case had been examined.  The Examiner was certainly not afraid to raise objections under the new Section 40 grounds of sufficiency and support.

Interestingly, at some stage after the new laws came fully into force, and with very little (any?) fanfare, the “case management” of divisional patent applications (where examination of divisional applications was forcibly expedited) was suspended by IP Australia.  It will be interesting to see if this case management is reinstated after IP Australia’s workload comes back to more normal levels.

By all accounts, the new provisions intended to speed up oppositions have also been rigorously applied by IP Australia, although some extensions of time have been allowed.

Finally, there have also been a smattering of Court cases considering aspects of the new laws.  Happily, the Federal Court has confirmed that patent attorneys now enjoy the same privilege as lawyers (although we are still not entirely certain whether or not this “new privilege” extends to documents prepared pre-15 April 2013).

Hopefully I will have more to report by 15 April 2015!

Andrew Jones