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AU法改正による進歩性基準アップ

2012.09.24

SKIP

オーストラリアで特許法改正があり、進歩性の基準が高くなるようです。
但し、2013/4/15までに審査請求を行なっていれば、旧法が適用されるので、旧法下での審査を望む場合には、それまでに審査請求をする必要があるようです。
具体的な内容は、PATENTS ACT CHANGESにあります。
ここにも色々と情報があります。
IP REFORMS
進歩性については以下の通りであり、従来は、先行技術として採用される文献について、世界的な基準よりも厳しい基準があったところ、その基準を世界的な基準に統一させた、という内容のようです。

Inventive and innovative step

Subsections 7(2) and 7(4) – removes the geographical limitation on the common general knowledge when assessing inventive step in a standard Patent application and innovative step in an innovation Patent.
Subsection 7(3) – 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 increase consistency between the standard set for inventive step in Australia and elsewhere.
従来の条文は、以下の通りです。
PATENTS ACT 1990 – SECT 7
Novelty and inventive stepNovelty
(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
Inventive step
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
Innovative step
(4) For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would , to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
(5) For the purposes of subsection (4), the information is of the following kinds:
(a) prior art information made publicly available in a single document or through doing a single act;
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.
(6) For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.
[ Notes: (1) For the meaning of document see section 2B of the Acts Interpretation Act 1901 .
(2) See also the definitions of prior art base and prior art information in Schedule 1: see also paragraph 18(1)(b) and subsection 98(1). ]
具体的な改正内容
http://www.comlaw.gov.au/Details/C2012A00035/Html/Text#_Toc320265580
条文レベルでの改正内容は、以下の通りで、どうやら、条文の”in the patent area”が”国内”っていう意味に解釈されていたところ、それを(whether in or out of the patent area)に変更することによって、”geographical limitation”をなくすというのが改正内容のようです。
Schedule 1—Raising the quality of granted patents
Part 1—Main amendments
Patents Act 1990
1 Section 3 (in the list of definitions)
Insert “preliminary search and opinion”.
2 Subsection 7(2)
Omit “in the patent area”, substitute “(whether in or out of the patent area)”.
Note: The heading to section 7 is altered by omitting “and inventive step” and substituting “, inventive step and innovative step”.
3 Subsection 7(3)
Repeal the subsection, substitute:
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
4 Subsection 7(4)
Omit “in the patent area”, substitute “(whether in or out of the patent area)”.

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