Proposals for Reform of the Australian Patent System

The Australian House of Representatives at the Australian ParliamentPhoto by Aditya Joshi on Unsplash

The Australian Government has finally released their response to the Productivity Commission’s 2016 review of the Australian IP system and some of their responses including proposals for reform of the Australian Patent system may concern some users of Australia’s patent system. The Government’s response can be found here.

Reform of the Australian Patent system

This article deals only with the Government’s responses in relation to the Patent System, however, the Government has also expressed an intent to reform other areas of IP law such as Copyright and Trade Mark law which we will cover in further articles.

Innovation Patents to be Abolished

The government has indicated that they support the abolition of the Innovation Patent.  The Innovation Patent has become a prominent feature of the Australian Patent system and is frequently adopted by Australian applicants and foreign applicants alike for whom a shorter 8 year term and optional examination make it an attractive option.  The Government’s reponse indicates that “appropriate arrangements will be made to maintain existing rights”.  Presumably this means that existing innovation patents and others filed in the meantime will remain valid and enforceable throughout their term.

Inventive Step Threhold to be Raised

Notwithstanding the recent reforms to the inventive step test resulting from the Raising the Bar legislation of 2013, the Government has expressed support for recommendations that the inventiveness threshold pursuant to ss. 7(2) and 7(3) of the Patents Act 1990 (Cth) should be raised even further.  The Government’s position is that ‘scintilla’ of invention and whether the skilled person would not ‘directly be led as a matter of course’, which are considerations under the present law on inventive step, are insufficient thresholds.  Presumably this suggests a move away from a qualitative consideration of inventive step towards a quantitative consideration where the degree of inventiveness is relevant.

The Government has expressed support for adopting the ‘obvious to try’ test applied in Europe as being suitable in some instances.  The Government recommends that IP Australia should update its practices such that it will consider the technical features of an invention for the purpose of the inventive step and novelty tests.

It is not clear whether the Australian Government has considered that in Europe the inventive step test can sometimes apply as a quasi patent eligible subject matter test (i.e. manner of manufacture).  This is particularly with respect to inventions involving non-technical subject matter such as algorithm and software inventions and business methods.

Identify Technical Features of the Invention in the Claims

The Government recommends that IP Australia should reform its patent filing processes to require applicants to identify the technical features of the invention in the set of claims.  How this will be applied in practice is not clear although it seems this idea may have been inspired by Europe’s ‘technicality’ requirement which is not presently a consideration of Australian patent law.  Presumably this requirement will dovetail with the Government’s recommendations with regard inventive step and the patent eligibility of ‘non-technical’ inventions.

Objects Clause for the Patents Act

The Australian Government has indicated that it would be appropriate for the Patents Act to be amended to include an objects clause that would describe the purpose of the patent system as being to enhance the wellbeing of Australians by promoting technological innovation and the transfer and dissemination of technology.  The apparent purpose behind this recommendation is to provide a clear statement of legislative intent for the guidance of the courts in the interpretation of the Patents Act.

One wonders whether providing such an objects clause in the Patents Act would achieve the stated objective of benefiting judicial interpretation or merely result in increasing the burden upon litigants to interpret the objects clause and increase uncertainty by providing scope for judicial activism.

When Will These Changes Come into Effect?

The Government has announced that a period of consultation will soon commence with stakeholders over how best to implement the Government’s proposed reforms to Australian Patent Law.  No doubt it will be some time, perhaps a year or more, before legislation is even put before parliament for consideration.  It is possible that the Government will alter its position during this period of consultation.  However, the principal reforms of abolishing the innovation patent and raising the inventive step threshold would appear to be inevitable.

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