Significant changes to Australia’s intellectual property laws will continue to develop in 2018. Concerning patents, the more controversial changes include the phasing out of Australia’s innovation patent system, and the possible introduction of a requirement that patent claims identify the technical features of the claimed invention.
Exactly how and when innovation patents will be phased out is unknown, but it is unlikely that rights in already granted innovation patents will be summarily withdrawn. We recommend that applicants review their patent portfolios now and consider filing divisional applications for innovation patents or converting standard patent applications to applications for innovation patents, where appropriate. Although innovation patents have been strongly criticized by the Government, including that the legal requirements for obtaining and enforcing innovation patents are overly generous to applicants, innovation patents have proven in many cases to be powerful intellectual property assets. Innovation patents expire after eight years, but they can be substantially less expensive to obtain than standard patents, while also being very difficult to invalidate.
The proposal that patent claims identify an invention’s technical features is part of the Government’s intention to better define what is appropriate “patentable subject matter”. This is part of a public debate ongoing in many countries and regions, including in the United States and Europe. It is largely in response to the threat of “patent trolls” and attempts to patent non-technical “business methods” and software. IP Australia has proposed that the Australian Patents Act be amended to include a requirement similar to Rule 43(1) of the European Patent Convention requiring that patent claims identify an invention’s technical features.
The above changes may be a part of new legislation promoted by IP Australia in 2018. The public was able to submit comments to IP Australia from 30 August to 17 November 2017 in response to the Government’s response to a 2016 report by the Productivity Commission (the PC Report) concerning intellectual property arrangements in Australia. IP Australia intends to publish all of the non-confidential submissions soon.
Following a review of the public submissions, IP Australia has confirmed that it intends to implement changes to Australia’s legislation on patents, trade marks, designs and plant breeder’s rights (PBRs) by developing two new Bills:
- IP Laws Amendment (Productivity Commission response Part 1 and other measures) Bill. This Bill is intended to implement numerous recommendations from the PC Report that the Government accepted. These include: eliminating the innovation patent system and changes to PBRs and trade marks legislation. A consultation period on an exposure draft of this Bill closes on 4 December 2017, and the Bill is planned to be introduced to Parliament in early 2018.
- IP Law Amendment (Productivity Commission response Part 2 and other measures) Bill. This Bill is intended to implement recommendations from the PC Report that the Government accepted, but where the Government believes that further consultation on an appropriate “implementation approach” is required. These include: changes to the rules around “inventive step” and possibly the above discussed requirement that an invention’s technical features be specified in the claims, requiring an “objects clause” in all patent applications, and changes to Crown use and compulsory licensing of patents and designs. A consultation period on an exposure draft of this Bill, followed by an introduction to Parliament is planned for 2018.
The Government’s response to the PC Report was provided in the following four papers:
Paper 1: Amending inventive step requirements for Australian patents
Paper 2: Introduce an objects clause into the Patents Act 1990
Papers 3 &4: Amending the provisions for Crown use of patents and designs; and amending the provisions for compulsory licensing of patents.
The Government had also requested commentary on the following paper:
Paper 5: Introducing divisional applications for international trade marks
Copies of the above papers are available on IP Australia’s website.