The Australian Government is proposing yet more changes to the Australian Patents Act 1990.

New Zealand is still patiently awaiting passage of the Patents Bill 2008, which will finally modernise the patent law by replacing the long-outdated Patents Act 1953.  In contrast, the Australian Government is proposing yet more changes to the Australian Patents Act 1990 ("the act"), following the recent substantive Raising the Bar patent reforms, and even more recent changes to clarify the Crown use provisions in the act. 

Summary of proposed amendments

IP Australia released a consultation paper on 26 July 2013, and is inviting submissions by 27 September 2013. You can view the paper here. The consultation paper proposes two amendments to the act to introduce:

  1. an "objects" clause to assist in the interpretation of the act
  2. an exclusion from patentability of inventions, the commercialisation of which would be considered wholly offensive to a reasonable and informed member of the Australian public.

Background to the amendments

In late 2011, the Australian Government accepted a number of recommendations from three reports on gene patents and patentable subject matter, and acted on those recommendations through the Raising the Bar reforms and by IP Australia improving its online systems. The current proposal addresses two outstanding recommendations but omits a third recommendation relating to clarification of the "manner of manufacture" test for patentability. 

1. The proposed objects clause

Inclusion of an objects clause in the act aims to clearly state the underlying purpose of a piece of legislation in a way that helps users of the legislation, such as the courts and government departments, resolve points of ambiguity or uncertainty. Two options are proposed for the new clause.

Option one

An independent organisation, the Advisory Council on Intellectual Property (ACIP) proposed the following object clause in its 2010 Patentable Subject Matter report, arguing that the patent system should

"... 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 Australian society as a whole."

Option two

In response, IP Australia proposed the following alternative clause that aims to recognise the interests of patent applicants, as well as patent owners, and to clarify what is in the "national interest". 

"The purpose of the patent system is to provide an environment that enhances the well-being of Australians by promoting innovation and the dissemination of technology and by balancing the competing interests of patent applicants and patent owners, the users of technology, and Australian society as a whole."

We think option two is probably the better one. An objective to promote innovation and the dissemination of technology is more appropriate to a patents act than a general objective to "promote Australia's national interest", which would seem to go beyond what a patents system could reasonably be expected to achieve.

2. Patentability exclusion

ACIP's 2010 report also recommended amending the act to provide

"...exclusion for an invention the commercial exploitation of which would be wholly offensive to the ordinary reasonable and fully informed member of the Australian public."

As a WTO member and to meet its obligations under the TRIPS agreement, Australia must provide patent protection for all technologies, except where an exclusion aims to protectpublic ordreor morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment. The patent laws of other TRIPS signatories, including Japan, New Zealand and the European Union, include similar exclusions but the ACIP proposal differs where it uses the language "wholly offensive to the ordinary reasonable and fully informed member of the Australian public" rather than the term "ordre public", a phrase with little relevance in Australia. 

This exclusion supplements the existing exclusions from patentability in the Patents Act, namely human beings and biological processes for their generation, and, in the case of innovation patents only, plants and animals and biological processes for their generation.

Implementing the exclusion

Because patent examiners will have little ability to objectively gauge ethical issues in their role in applying the exclusion during the examination process, it is also proposed that the act be amended to give IP Australia the ability to

"seek non-binding advice, and to have the discretion to decide the most appropriate way to do this".

Call for submissions

As noted above, IP Australia has asked for written submissions from anyone interested by 27 September 2013. The consultation paper in particular asks for responses to three questions posed on the last page of the paper. Submissions should be sent to consultation@ipaustralia.gov.au, preferably in Word or a rich text format. IP Australia will then consider the submissions and undertake further consultation, including public exposure of the legislation drafting instructions.