25 November 2011

Government Response to Patent Reviews: ‘Not Much Left to Do’

Not much to do...On 23 November 2011, the Australian Government finally issued its response to nearly a decade’s worth of reviews of the Australian patent system.  The full response can be downloaded from IP Australia’s web site.

While the Government’s response is nominally in reply to the report of the Australian Senate Community Affairs Committee Inquiry into Gene Patents (which was published almost exactly a year ago, and reported on this blog in Gene Patents Survive Australian Senate Enquiry – For Now), it has also taken the opportunity to accept a recommendation of that report to respond simultaneously to:
  1. the 2011 Advisory Council on Intellectual Property’s (ACIP) Patentable Subject Matter Report (PSM Report, covered here in ACIP Reports on ‘Patentable Subject Matter’, and discussed again in Why IP Professionals Must Take ‘Gene Patent’ Opponents Seriously);
  2. the review of Australia’s patent system by IP Australia, which has already led to the introduction in the Senate of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (see Senate Patent Reform Bill – A Closer Look); and
  3. the 2004 Australian Law Reform Commission’s (ALRC) Report No. 99, Genes and Ingenuity: Gene Patenting and Human Health (ALRC Report), on which work commenced nearly ten years ago, in 2002.
Out of these three reviews, the Government had identified 58 distinct recommendations to which it has responded by:
  1. ‘accepting’ 24 recommendations;
  2. ‘accepting in principle’ 17 recommendations;
  3. ‘noting’ seven recommendations;
  4. ‘not accepting’ five recommendations; and
  5. finding that five recommendations are for other bodies or organisations to address.


The vast majority of the recommendations that have been ‘accepted’ or ‘accepted in principle’ apparently require no further action, because they have already been addressed by existing reforms or advances, including, in particular, the Raising the Bar bill currently before the Senate, and changes or improvements in practices at IP Australia, in particular the enhancements to the AusPat search tools, and the creation of the eDossier system for online public access to documents and correspondence associated with the prosecution of patent applications (see IP Australia Launches Enhanced Patent Search with Online File History).

In fact, it appears that the ‘Government’ response has IP Australia’s fingerprints all over it.  The response includes repeated references to Raising the Bar (14 mentions), AusPat (4 mentions) and eDossier (4 mentions) which, by all accounts, are between them the solution to most of the woes of the Australian patent system.  We also learn how well-trained Australian patent examiners are, with IP Australia spending 3.4% of its expense budget on staff training and development in the 2010 financial year, equivalent to $5,900 per patent examiner. Additionally, while the Government accepts various recommendations regarding the need for clear examination guidelines for applying the criteria of patentability to controversial subject matter, such as genetic and stem cell technologies, no specific action is required due to the adequate guidance already provided in IP Australia’s ISO 9001 quality-controlled Australian Patent Office Manual of Practice and Procedure.

Where IP Australia does not have matters in-hand, the Advisory Council on Intellectual Property (ACIP) and/or the Intellectual Property Research Institute of Australia (IPRIA) will be on-the-ball, conducting quality reviews and research into the operation and use of the Australian patent system.

Credit where it is due to IP Australia in this process – if it had not taken the initiative in conducting a consultation process, and drafting legislation, then the reports and recommendations would most likely still be languishing in someone’s bottom drawer.  IP Australia has certainly been driving the reform process, when the Government of the day, and other stakeholders in the patent system, showed no interest in taking up the recommendations of the recent reviews and inquiries.


So, after nearly a decade of reviews of the patent system, there does not seem to be very much left for the Government to do in reply.  Of the 58 distinct recommendations identified, there are only three which appear to require a substantive response:
  1. the inclusion in the Australian Patents Act 1990 of a statement of objectives, to ‘provide a clear statement of legislative intent’;
  2. replacing the venerable ‘manner of manufacture’ test for patentable subject matter with an alternative statement of the requirements using clear and contemporary language, such as ; and
  3. removing the existing specific exclusions to patentability in section 50 of the Patents Act, and introducing a ‘morality test’, consistent with Australia’s obligations under Article 27(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
We note that all three of these recommendations arise out of the recent ACIP PSM Report, which proposed the following language for the suggested provisions:
  1. the objective of the legislation: ‘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 technological knowledge, and Australian society as a whole’;
  2. patentable subject matter: ‘an artificially created state of affairs in the field of economic endeavour’; and
  3. the morality test: ‘exclude from patentability an invention the commercial exploitation of which would be wholly offensive to the ordinary reasonable and fully informed member of the Australian public’.
Despite the apparent simplicity of these proposals, in each case the Government is promising ‘the same considered and comprehensive public consultation process as the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 including public exposure of the legislation drafting instructions and the draft legislative provisions.’

So, none of these further changes is going to happen overnight.  And first of all, the Government needs to get the Raising the Bar Bill through Parliament.  So far, it has only had its first reading in the Senate.  However, this response – which reinforces the fact that the Bill helps to address numerous recommendations of the various reviews of the patent system, conducted under governments from both sides of politics – is quite likely to assist the Bill in gaining broad support in the Parliament.


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