There have been numerous reports that the new Raising the Bar provisions of the Patent Law actually ‘raises the bar’ on what is patentable. This is an overstatement, but there are important improvements provided by the Raising the Bar provisions which help both Australian inventors and those from overseas seeking a patent in Australian.
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 introduced changes to the Patents Act 1990
Does the change of law of Raising the Bar mean my invention must be more inventive? – Generally No.
Patents still protect sensational Nobel-prize winning inventions such as coloured LEDs, but also protect inventions over a whole range of inventiveness.
Yes the test on Inventive Step has changed.
There are two parts to the Inventiveness test.
- First your invention must be novel compared with any prior publication or use anywhere in the world. That means that no pre-existing invention may exist that shows all the essential features of your invention.
- Second, the differences must provide an inventive step over what is already known, and must not be ‘obvious’. Therefore, implicitly, they must be more than non-inventive differences.
The second test of inventive step no longer has the geographical limitation on the common general knowledge when assessing inventive step and removes the requirement that prior art documents for inventive step be limited to only those documents that would have been ‘ascertained, understood and regarded as relevant’ by the skilled person. These amendments ensure that all information that was publicly available at the priority date of the claimed invention is taken into account and increases consistency between the standard set for inventive step in Australia and elsewhere.
It’s worth noting, though, that most inventors seeking a patent are aiming not only to obtain monopoly protection in Australia, but also to obtain monopoly protection in the major overseas markets. This means that the inventions that are subject of most patent applications in Australia already have to meet overseas standards. Through the Raising the Bar adjustments, Australian law has merely been tidied up to meet the same standards as other major markets – so in practice there will be little impact on patent applicants.
Enablement provisions are still required but are defined differently.
Enablement is the simple rule that you cannot receive a monopoly through a patent if you have not provided sufficient details for a person ‘skilled in the art’ to perform the invention. This means that keeping important features secret is not permitted, and could invalidate your patent. The benefit provided to you by a 20-year patent monopoly is granted on the basis you provide complete information on the technical advancements you have made, so the public benefits in return from the advancement of knowledge. Also, this means that others can fully exploit your idea after your 20-year monopoly period ends.
But an important difference in the Raising the Bar provisions is that the claims defining your invention must be supported by the description.
The scope of the monopoly of your patent defined in your claims needs to match the scope of your disclosure
As an example
Your invention could be the use of a flashing light on a vehicle in order to indicate to the surrounding public that an emergency situation has occurred and to allow the vehicle to pass.
Now let us assume that this is novel and that your example of this could be:
- The use of an incandescent light and an on/off switch. This would result in the flashing light effect.
However you might not have thought of the other different conceptual mechanisms that could be used such as:
- The use of a light on one side of a carousel, where the carousel rotates providing intermittent light when the light is on your side and thereby providing a flashing light effect.
- The use of a fixed light but using a moving curtain means, such as a metal slide with a cut-out, where the curtain means moves laterally across the light to reveal or hide the light, thereby providing a flashing light effect;
- The use of light source with electronic switching, which controls the turning on and off of the light so as to minimise dwell in the light operating, and thereby providing a flashing light effect.
Previously it could be argued that your patent covers all forms of the concept. This could be seen as overreaching and not a fair bargain to the public as you have a broad scope monopoly even though you have only provided the public with a narrow scope of the concept.
In these circumstances it was also necessary for later developments of improvements to show that their invention could not possibly be considered to be disclosed in the earlier patent
The new, more definite provision that the claims defining your invention must be supported by the description helps to limit this problem and provide clearer limits on the scope of monopoly.
It is therefore important to work with your patent attorney at BaxterIP to review and assess different versions of your invention, so that you can make a full disclosure and achieve as wide a monopoly as possible, with a justifying wide range of examples.