Intellectual Property Laws Amendment (Raising the Bar) Act 2012: changes to the Trade Marks Act

/ Madderns / Important Updates

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law by the Australian Parliament on 15 April 2012. The provisions of the new laws will come into force on 15 April 2013. Changes to the Trade Marks Act primarily involve the opposition and customs seizure provisions of the Act, as outlined below.

Opposition Period

The opposition period is to be shortened from 3 months to 2 months.

Notice of Opposition

The Notice of Opposition will merely need to be filed with the Trade Marks Office and it is likely to be a simple form stating that a party opposes registration of a trade mark.

Statement of Grounds and Particulars

One month after filing the Notice of Opposition, the Opponent must lodge a statement of grounds and particulars detailing each ground of opposition and the particulars on which the Opponent intends to rely.

Notice of Intention to Defend

Within one month of the statement of grounds and particulars, an Applicant will need to file a Notice of Intention to Defend the opposition. Failure to file the Notice will result in the trade mark application lapsing in opposition proceedings.

Periods for lodging evidence

The time frames for the parties to prepare and serve their evidence are expected to be reduced.

Customs seizure provisions

A trade mark owner will have the ability to access multiple samples of seized goods, to remove such goods for inspection and the importer must make a claim for return in order to have the seized goods returned.

Damages

The Trade Marks Act will include provisions for additional damages in infringement proceedings, bringing the Trade Marks Act into line with the Copyright Act.

Presumption of registrability

Section 41 will be repealed and replaced to clarify that the presumption of registrability, as provided for under Section 33, does apply to section 41.

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Intellectual Property Laws Amendment (Raising the Bar) Act 2012: changes to the Patents Act

/ Madderns / Important Updates

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law by the Australian Parliament on 15 April 2012. Some of the provisions of the new laws came into force on 15 April 2012 and the remainder will come into force on 15 April 2013.

The following infringement exemptions came into force on 15 April 2012.

Experimental use

An act done for experimental purposes relating to the subject matter of the invention will not be considered as an infringement of a patent. Examples of such acts include determining the properties of the invention, determining the scope of a claim relating to the invention, improving or modifying the invention, determining the validity of the patent, and determining whether the patent for the invention has been infringed.

Regulatory approval

The current infringement exemptions will be extended to non-pharmaceuticals, so that acts in obtaining regulatory approval for such subject matter in Australia or under the law of another territory will not be considered to constitute patent infringement.

The following changes aimed to increasing the threshold for patent validity will come into force on 15 April 2013. Under the transitional provisions, if a Request for Examination is filed prior to 15 April 2013 the application will not be subject to these new requirements.

Inventive and innovative step

The test for inventive step and innovative step will be expanded to include common general knowl- edge anywhere in the world. Furthermore, for inventive step considerations prior art information will no longer need to have been ‘ascertained, understood and regarded as relevant’ by the skilled person.

Utility

A specification will need to disclose a ‘specific, substantial and credible use for the invention’.

Fair Basis

Fair basis will be replaced with a requirement that the claims be ‘supported by matter disclosed in the specification’ which is expected to result in the scope of patent rights being narrower than has previously been the case.

Sufficiency

Specifications for both provisional and complete patent applications will need to be ‘clear enough and complete enough’ for a skilled person to perform the invention. This is a higher disclosure level for provisional patent specifications than the previous requirement that the application describe the invention in general.

Revocation of acceptance

The Commissioner may revoke acceptance of an application.

Amendments

The current relatively liberal amendment provisions will be tightened to prevent applicants adding subject matter that was not disclosed in the specification as filed, except when the amendment is to correct an obvious mistake or clerical error.

Modified examination

The option of modified examination, based on a corresponding patent granted in a foreign country, will no longer be available.

Omnibus claims

Unless absolutely necessary to define the invention, omnibus claims will not be allowed.

Privilege

The privilege provisions of the Patents Act have been extended to specifically include communica- tions with foreign patent attorneys.

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