30 April 2011

Federal Court Finds Fatal Flaw in PBR Act

Elders Rural Services Australia Limited v Registrar of Plant Breeder's Rights [2011] FCA 384 (19 April 2011)

Nadine potatoes, now
a 'free for all'?
Plant Breeder’s Rights (PBR’s), granted under the Plant Breeder’s Rights Act 1994 (the PBR Act), perform a similar function in Australia to Plant Patents in the US.  Generally speaking, PBR’s are rights granted to the breeder of a new variety of plant that provide exclusive control over propagating materials, such as seeds, cuttings, divisions, tissue culture, and so forth.  The current PBR Act came into force on 10 November 1994, prior to which rights in relation to new plant varieties were granted under the Plant Variety Rights Act 1987 (the PVR Act). 

The PBR Act permits any person to act as an agent for another in relation to matters relating to PBR’s, and it is common for Australian patent attorneys, especially those having expertise in relevant areas of biology, to provide advice and services in relation to PBR’s.  Here at Patentology, we do not claim to have such expertise, or indeed any practical experience in relation to PBR’s, so we would welcome any comments from informed readers who might find fault with what follows.

In short, Justice Lander in the Federal Court of Australia has uncovered an apparent drafting error in the transitional provisions of the PBR Act which – if we understand the consequences correctly – results in unenforceability of  any rights which were originally applied for under the PVR Act but not granted until after commencement of the PBR Act.

20 April 2011

Patentology Newsbytes

A semi-regular round-up of breaking news, current events and comments too trivial to warrant their own posts.


Two-Millionth PCT Application Filed – Australian Citizen? Be a Patent Examiner! – ‘Inventive but not Novel’ Decision Appealed by AMR – Easter and ANZAC Day Holidays, Closures and Deadlines

Update on Campaign Against Medical Research Funding Cuts

Last week we reported on the ‘rumours’ (i.e ‘leaks’) suggesting that the Australian government is considering slashing a potential $400 million ($133 million annually, or around 19%) from the funding provided via the National Health and Medical Research Council (NHMRC), which currently distributes around $700 million each year to university, and other public sector, researchers.

As also reported, a campaign organised under the banner Discoveries Need Dollars has conducted rallies over the past week in every mainland State and Territory capital city, which have so far been attended by over 12,000 people.  The simultaneous Twitter campaign caused #protectresearch to trend not only in Australia, but also in the US and Canada.

In Tuesday 19 April 2011, Discoveries Need Dollars representatives met with senior members of the Federal Government in Canberra.

12 April 2011

Budget Cuts Threaten Australian Medical Research Funding

It is ‘budget season’ once again here in Australia – the time of year when government ‘sources’ start to leak like sieves with information regarding proposed measures in the (supposedly) confidential annual accounting to be announced by the Treasurer in May.

This year, we are greatly concerned by reports that the Australian government is considering slashing the budget for medical research funding by nearly 20%.  This is a disturbing and short-sighted proposal when the Australian economy remains strong, relative to our major trading partners, and medical research is one of the nation’s great strengths.  Australian contributions to medical research and innovation include antibiotics (Howard Florey), the use of lithium to treat psychiatric disorders (John Cade), the ‘bionic ear’ (Graeme Clark) and the cervical cancer vaccine (Ian Frazer), amongst many others.

Why, then, would the nation put this great legacy at risk to achieve short-term political gains?  If you find this as unacceptable as we do, please read on to learn more, and to find out how you can contribute to the various campaigns opposing the proposed cuts.

07 April 2011

Patentology Newsbytes

A semi-regular round-up of breaking news, current events and comments too trivial to warrant their own posts.


Google Boss Praises Australian National Broadband Network – US Patent Reform Hits the House – Trans-Tasman Patent Attorney Regulation on the Horizon – More on Australian IP Law Reform – Australian Innovation Festival and World IP Day Imminent

04 April 2011

IP Australia Launches Enhanced Patent Search with Online File History

The enhanced Australian patent search system, AusPat v2.0, has now gone live!

As we reported last November (see IP Australia Announces Upcoming Launch of Full Text Patent Searching), a beta version of the new system has been in operation for a few months, providing full-text searching of approximately 50% of IP Australia's full collection of patent documents.  Subject to a few exceptions (see below for further details), the release version provides full text searching of Australian patent specification dating back to 1904.

The other enhancement included in AusPat v2.0, which was foreshadowed by IP Australia last August (see Coming Soon: Online Access to Australian Patent Prosecution Histories), is the provision of online access to documents relating to the prosecution of patent applications dating back to 2006 and which are open to public inspection (OPI). 

03 April 2011

Australian Patent Reform – Wrap-Up

In eight prior articles, we have reviewed some of the major changes to Australian patent law and practice that are being proposed by IP Australia in the Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.

The exposure draft was released for public review and comment on 3 March 2011 (see IP Australia's Exposure Draft Exposed!), and written submissions were invited by a deadline of 4 April 2011.  Considering the complex and extensive nature of the proposed changes, one month is not a very long period of time, and it has taken us this long to review just the most significant of the proposed patent reforms. 

The purpose of this article is therefore to provide a brief summary of the proposed reforms covered in the earlier articles, ahead of the deadline for written submissions.

Patent Reform Exposed Part VIII – Transition

In this series of articles on IP Australia’s proposed reforms to the patent system, although we have expressed various concerns in relation to the implementation of some of the changes, we are strongly supportive of the intent of the reforms.  It is imperative that Australia’s patent laws be brought up to international standards, most pressingly in relation to the assessment of inventive step, but notably also in relation to the standard of disclosure required in the patent specification.

However, one aspect of the Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 that we are wholly unable to support is the proposal for transition to the higher standards of patentability.  In particular, the draft transitional provisions (in Item 39 of Schedule 1 to the draft Bill) would have the higher standards apply not only to applications filed after commencement of the amendments, but also to applications already filed, but on which a first examination report has yet to be issued.

With all due respect to those responsible at IP Australia, this can only be interpreted as a stunning failure to appreciate the basis upon which users of the patent system make business decisions relating to the protection of their IP, and upon which their advisors (e.g. patent attorneys) provide input to those decisions.

02 April 2011

Patent Reform Exposed Part VII – ‘Search to Sealing, and Beyond…’

In previous articles of this series, we have looked in detail at a number of the main proposals in the Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 which would change the substantive requirements for validity of a patent.  In this article, we look at some of the proposals that would change practices, and some of the standards applied, within the Patent Office. 

While some such proposals may affect whether or not a patent is granted, none have any impact on the validity of a granted patent.  The objective is essentially to raise the standards of examination in order to reduce the number of patents actually granted with invalid claims.  As many readers will no doubt be aware, there is no ‘presumption of validity’ of a granted patent in Australia.  On the contrary, section 20 of the Patents Act 1990  expressly disavows any such presumption, and makes clear that the work of the Patent Office is conducted on an ‘all care, but no responsibility’ basis.

The proposed changes discussed below are:

  1. provision for preliminary search and opinion;
  2. examination of utility;
  3. permitting examiners to consider evidence of ‘prior use’;
  4. lowering the barrier to refusal of an application; and
  5. changes to amendment provisions.

Copyright © 2014
Creative Commons License
The Patentology Blog by Dr Mark A Summerfield is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 3.0 Australia License.