The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was intended to address six key areas, one of which was to raise the quality of granted patents. The aim of raising patent quality was to ensure that patents granted in Australia were more closely aligned with international standards and with those granted by our major trading partners. Ten years on from its commencement we are examining the impact of the changes introduced by the RTB Act, starting with patent prosecution.
RTB Act changes which have impacted patent prosecution include:
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Removal of the geographical limitation on the determination of common general knowledge.
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Removing the requirement that prior art documents be “ascertained, understood and regarded as relevant”, before they can be considered in assessing inventive step.
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Insertion of a requirement that the patent have a “specific, substantial and credible use”.
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Replacement of the full description requirement with the requirement that the specification describe the invention in a clear enough and complete enough manner for it to be performed by a skilled worker.
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Replacement of the fair basis requirement with the requirement that the claims are fully supported.
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A widening of the grounds of examination to include utility and prior use.
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Legislative codification that patent examiners were to use the “balance of probabilities” test in assessing all grounds for patentability. Prior to this enactment there was authority that examiners should only refuse patents if it was “practically certain” they were invalid.
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A reduction of the prosecution period from 21 months to 12 months from the date of the first report.
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A limitation on the ability to convert an application to a divisional application of an earlier application.
It might have been expected that raising standards in such a wide range of examination areas would have led to a lowering of patent acceptance rates in Australia. However, patent acceptance rates have instead remained relatively constant or slightly increased – despite the fact that the amendments were intended to make it harder to obtain patents in Australia. Between 2009 and 2013 patent acceptance rates[1] increased from 69% to 72%. However, between 2017 and 2021, the acceptance rate has stabilised at about 75%.[2] Assessed on acceptance rates alone, there has been no significant change brought about by the RTB Act changes.
These somewhat counterintuitive results raise questions regarding whether the legislation was necessary, and whether it has achieved its intended purpose. It may well be that most international patents filed into Australia, being the majority of Australian patent filings, already met the raised standards as these were the standards applicable in their country of origin. As the changes had the effect of bringing Australian law into accord with our major trading partners, it should perhaps come as no surprise that patents filed from those countries already met the higher standard.
An alternative viewpoint is that the changes have had the effect of raising patent standards but that this is not reflected in any change in acceptance rates. Applicants, being aware of the raised standard, may now only file applications into Australia that meet the higher standard. If this was the case, we would anticipate that the total number of patent filings into Australia would have gone down but there is no evidence to support this.
Ultimately, acceptance rates probably have little to say about the quality of patents being granted. Having overseen prosecution of patents both before and after the legislative changes, it is this author’s impression that the changes have indeed made prosecution more challenging. In my experience, this has meant that in many instances patent applicants have had to narrow the scope of their patents to achieve acceptance. Accordingly, patents that may have been granted with an unduly broad scope under the previous legislative regime are still being granted, but with a scope that more closely reflects the coverage obtained in other countries.
While acceptance rates have remained largely unchanged, practical experience suggests that the scope of accepted patents has been narrowed, achieving the legislative aim. As time progresses, it will be interesting to analyse whether patents granted post the RTB Act have a higher rate of success in court challenges when compared to patents granted under the previous regime.
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[1] Where acceptance rate is defined as the number of accepted applications divided by the number of applications examined (thus excluding applications that are filed but which are allowed to lapse prior to requesting examination or by not requesting examination).
[2] Raising the Bar Has Not Reduced the Patent Acceptance Rate in Australia ~ patentology