Tony Conaghan

Raising the bar part 3: Reducing delays in resolution of patent applications

Tony Conaghan

18 March 2013

Patents

With the advent of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (Act) on 15 April 2013, this blog entry looks at some key amendments made to the Patents Act in relation to expediting application processes.

The policy behind the push for expedition is found in the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Memorandum), which underscores the importance of balancing sufficiency of time for patent applications with certainty as to whether and to what extent rights will be granted.

 

The Memorandum identifies:

 

  • opposition proceedings; and
  • divisional patent applications (which allow an applicant to prosecute as separate applications, what used to be parts of an earlier application),

 

as the source of current delays in the patents system.

Patents Amendments

Divisional patent applications

 

The Memorandum alludes specifically to interested parties’ strategic use of divisional patent application mechanisms to prolong application processes. This results in adverse parties’ and, as an extension the public’s, disadvantage.

 

With divisional applications conferring the advantage on an applicant of the same priority date as the ‘parent’ application, the mechanism has been employed for a number of tactical advantages, including:

 

  • the instigation of ‘continuation divisionals’, viz. divisional applications filed in relation to substantially the same inventions as those the subject of the parent application. Particularly where filed late in opposition proceedings, the opponent incurs considerable expense now in monitoring and challenging two proceedings.
  • Conversion from a standard to divisional application late in the opposition period, where prior art missed during examination of an opposed application is raised by that application’s opponent. The applicant is then able to segregate that prior art as a divisional application, with that prior art acquiring the priority date attaching to the parent application. This extracts the prior art from the opposed application and extricates the principal ground of opposition.

 

Both of these advantages come at the opponent’s expense. Continuation divisionals translate to the requirement to monitor and challenge two proceedings. Late conversion from standard to divisional applications results in the opponent’s squandering of time and costs in preparing evidence for a citation the relevance of which has expired.

 

s 79B: The Act prescribes tightened timeframes for divisional applications and conversion to divisional applications, such that an applicant cannot file a divisional application upon expiration of the commencement of opposition proceedings for the parent application.

 

Amendments also provide for a regulatory framework insisting on details to be provided with divisional applications, such as identification of the parent application to which they relate, promoting transparency in proceedings.

 

s 79C: The Act will be amended to bestow regulatory power to require that prescribed particulars accompany divisional applications of innovation patents, again achieving transparency and allowing applicants to strategize their applications while avoiding extraneous costs / delays.

 

The additional capability assigned to chapter 10 of the Regulations permits amendments to particulars only during the period for filling a divisional application or no later than acceptance. The knock-on effect of this is that conversion to divisional applications is possible within a limited scope of time.

 

Expedition and streamlining of opposition proceedings

 

s 105: Pre-amendments, a Court considering an appeal from the Commissioner of Patents’ decision was confined to taking into account the subject matter before the Commissioner. This frustrated the appeals process, given that, for example, specifications postdating the Commissioner’s decision were not to be included as material the subject of the appeal. The provision now accommodates consideration of amendments made to patent applications (NB: not granted patents) while the appeal is live.

The Memorandum also anticipates that new subsection 105(1A) will see the courts affording consideration to factors relevant to applications (cf applying to patents).

 

This new subsection interplays with:

 

s 112A: the purport of which is to avoid different decision-makers attending the same issues. It achieves this by giving courts the discretion to decide on amendments to a patent application during appeals from the Commissioner’s decision (in consonance with the s 112 approach in relation to granted patents).

s 141: The Commissioner by this provision can refuse (subject to review by the Administrative Appeals Tribunal) leave to withdraw an opposed application, as a mechanism to thwart applicants’ use of the withdrawal to pursue the invention by divisional application (thereby avoiding opposition proceedings). This provision is further buttressed by the Commissioner’s ability to refuse withdrawal where the applicant has filed a continuation divisional.

Evidence and sanctions

 

s 210: Amendments to this provision fortify the threshold test to be satisfied before the Commissioner can require production of documents or summon witnesses. The advantage of this is that parties do not squander resources and time insisting on the introduction (and then forensic analysis) of non-compelling evidence.

Amendments to this section also clarify the Commissioner’s power’s reach over foreign entities parties to proceedings.

s 179 – 181; s 210A: The Amendments repeal the s 179 – 181 criminal sanctions for non-compliance, due to the practical issues in enforcement (particularly in relation to foreign entities), and replace these with non-criminal sanctions under s 210A, such as (taken from the Memorandum, Schedule 3, Item 15):

  • draw an inference unfavourable to the person’s interest in the proceedings before the Commissioner – this could include dismissal of the proceedings or award of costs, where appropriate

 

The tenor of this amendment is to streamline proceedings by allowing for the Commissioner’s ‘tailoring’ of remedies appropriate to the circumstances and competing interests of specific matters.

 

Conclusion

 

Amendments to the Patents Act evince a clear intention on the Federal Government’s part to access the Patents system in Australia on a very pragmatic, functional level which will serve to:

 

  • streamline practitioners’ approaches to application and opposition processes; and
  • increase certainty for practitioners and intellectual property owners, as well as the general public, as to their rights both in relation to market entry; the flow-on effect of which is to:
  • minimize the incidence of abuse of mechanisms and processes provided for in the Patents system and decrease costs in engaging bona fides in the processes in place to hear and resolve issues genuinely in dispute.