Josh Henderson

Raising the bar part 2 – Raising the quality of granted patents

Josh Henderson

11 March 2013


Patent attorneys and patentees have been engulfed in a flurry of activity recently to have their patent applications filed and examined prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (Act) on 15 April 2013.


The reason for this is that the Act makes some fundamental changes to what is required for the grant of a patent. We discuss the key amendments below.


Inventiveness and innovative step


The Act makes important changes to the way that inventiveness, innovative steps and usefulness are assessed under the Patents Act. These changes mean that patentees will be put through a more rigorous process to obtain a patent.


Amendments to s40 Patents Act


Section 40 of the Patents Act relates to the requirements for what is included in the specification. These are known as ‘internal’ requirements of a valid patent and they are important as the specification discloses the actual invention.


*Click here to view Explanatory Memoranda.

Preliminary search and opinion (PSO)

The Act allows the Commissioner of Patents to conduct a PSO in relation to a standard patent application. This means that the Commissioner will conduct a search, for $2,200, of the most relevant prior art and provide a written report (much like what occurs in relation to applications made under the Patent Cooperation Treaty). This will hopefully allow patentees to assess, at an early stage, to assess its chances of obtaining a patent.

A stricter approach in patent examinations and re-examinations

The Patent Office’s procedures in examinations and re-examinations have been toughened, including:

  • A stricter approach on amendments to specifications. Currently, an amendment will be prohibited if it in substance, it is not disclosed in the filed specification. The Act will change this to disallow an amendment if the amendment extends beyond that disclosedin the specification. This will encourage patentees to describe the invention properly when it files its application.
  • The ability to consider usefulness and prior use as grounds of invalidity during examination and re-examination (which it cannot currently do);
  • An obligation to consider evidence on the balance of probabilities during examination and re-examination (which does not currently exist).



The Raising the Bar amendments are the most substantial change to the patent system in Australia since 1990 (when the current act commenced). These changes force patentees to meet higher requirements to obtain a patent, which should promote a more robust patent framework and encourage innovation.