The Australian government yesterday published the final report by ACIP (the Advisory Council on Intellectual Property) into “patentable subject matter” - the types of inventions or innovations that should qualify for patent protection.

The current definition of “patentable subject matter”

The present Australian Patents Act 1990 does not include a clear definition of what technologies meet the requirements for patent protection. In fact the present Act relies upon language from the English Statute of Monopolies of 1623 which defines patentable inventions as those being directed to “a manner of manufacture”.

ACIP’s key recommendations

In its report ACIP has made a number of recommendations, which may be summarised as follows.

Statement of objectives

  • Amend the patents legislation to include a statement of objectives that describes the purpose of the legislation.
  • The statement of objectives should outline that the legislation is intended to provide an environment that promotes Australia’s national interest and enhances the well-being of Australians by balancing the competing interests of patent rights holders, the users of technology and society.

Clarify and simplify the Patents Act

  • Language drawn from the famous NRDC v Commissioner of Patents1 Australian High Court decision should be included in the patent legislation to define the patentable subject matter requirement as involving an artificially created state of affairs in the field of economic endeavour.
  • The patent legislation should be amended to improve the clarity of the language and to remove the overlap of the patentable subject requirement with other provisions of the Act.
  • The legislation should be amended so that the requirement of usefulness currently included within the Act encompasses the utility aspect of the manner of manufacture test for patentable subject matter, and so that this becomes a ground for examination of standard and innovation patents.

Subject matter excluded from patentability

  • Specific exclusions should be retained within the patent legislation for:
    • human beings and the biological processes for their generation; and
    • plants and animals and the biological processes for their generation (for the purposes of the innovation patent only).
  • The sections of the current Patents Act relating to inventions that are either contrary to law or involve mere admixtures of known ingredients should be repealed.
  • A patentability exclusion as permitted by Article 27(2) of the TRIPS Agreement should be included in the legislation which would exclude from patentability an invention, the exploitation of which would be wholly offensive to the ordinary reasonable and fully informed member of the Australian public.
  • The legislation should be amended to provide the Commissioner of Patents with the power to seek advice from any person the Commissioner considers appropriate to assist the Commissioner in applying the general patentability exclusions referred to above.

Patentability a pre-condition to acceptance

  • The Patents Act should be amended so that the Commissioner of Patents must be satisfied that an invention is a patentable invention before a standard patent application is accepted or an innovation patent is certified.

In releasing the report the Chairman of ACIP, Mr Leon Allen, who is also a Partner of Davies Collison Cave, noted that consideration of the requirements for patentable subject matter was required because “There has been recent debate in Australia on the patenting of genes, computer software and business methods” and he notes that “ACIP’s recommendations provide a framework to deal with these concerns”.

It will now be up to the Australian government to consider the report and to decide on what legislative reform, if any, will be adopted in response.