28 July 2013

‘Offended’ by Patents? Make Your Feelings Known!

ExpletiveIP Australia is seeking views on further proposed amendments to the Australian Patents Act 1990, which arise out of three enquiries into gene patents and the scope of patentable subject matter in Australia.

A consultation paper, entitled Patentable Subject Matter: Consultation on an Object Clause and an Exclusion from Patentability [PDF, 159kB], was released on 26 July 2013, and IP Australia is inviting written submissions by 27 September 2013.  While interested parties may no doubt comment on the proposals in any way they see fit, IP Australia is particularly requesting responses to three specific questions set out in the consultation paper.

The two amendments proposed in the consultation paper are to:
  1. add an ‘objects’ clause, to assist in the interpretation of the Patents Act; and
  2. introduce a new exclusion from patentability for ‘an invention the commercial exploitation of which would be wholly offensive to the ordinary reasonable and fully informed member of the Australian public’.
Both of these amendments were recommended in the report of the Advisory Council of Intellectual Property (ACIP) on its review of Patentable Subject Matter  (‘PSM Report’), published in February 2011.  The first was also proposed by the Senate Community Affairs Committee Inquiry into Gene Patents (‘SGP Report’), while a version of the second was recommended in the Australian Law Reform Commission’s report Genes and Ingenuity: Gene Patenting and Human Health (ALRC Report 99)

The Australian Government responded to all three of these reports [PDF, 145kB] in November 2011.  As I wrote at the time, the government response could have been summarised as ‘not much left to do’, with IP Australia’s efforts in progressing the Raising the Bar patent reforms, and improving its own online systems, having addressed the vast majority of recommendations in the three reports.  I identified only three substantive recommendations accepted by the government, and not yet implemented, including the two subject of the current consultation.  The third accepted recommendation, which is to modernise the language used in the Patents Act to clarify the ‘manner of manufacture’ patentability test, appears to have been dropped into the ‘too hard’ basket for now.

Objectives of the Patents Act

The inclusion of a formal statement of objectives within an Act can have a substantive effect on the way provisions of the Act are interpreted by the courts.

Part 5 of the Australian Acts Interpretation Act 1901 sets out general interpretation rules, which include:
  1. that all sections and schedules of an Act, along with the long title, any Preamble, the enacting words, and headings, form part of the Act (section 13);
  2. that when interpreting any provision of an Act, the interpretation which will best achieve the purpose or object of the Act is to be preferred (section 15AA); and
  3. that consideration may be given to extrinsic information if it is capable of assisting the interpretation of a provision of an Act (section 15AB);
Therefore, the object of an Act is always relevant to its interpretation, however an express statement of objectives included within the Act has considerably greater force in guiding a court.

The PSM Report recommended that:

…a statement of objectives should be included in the Patents Act 1990, which should describe the purposes of the legislation as being: ‘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.’

IP Australia’s consultation paper cites this proposal, and puts forward an alternative wording:

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.

IP Australia’s formulation eliminates the reference to Australia’s ‘national interest’ and includes an additional specific statement as to how a Patents Act can contribute to the ‘well-being’ of Australians, i.e. by ‘promoting innovation and the dissemination of technology’.  I personally think this is an improvement over ACIP’s version because, as I pointed out when the PSM report was released, it seems to me that there are difficulties in defining the ‘national interest’ in terms of provisions of the Patents Act itself, when the majority of users of the system are foreign.  Australia’s patent laws reflect our participation in an international regime, supported by various treaties and convention, and much of the benefit to Australian users of the system lies in the availability of reciprocal rights in other countries.

In my view, the express objectives of the Act should not extend beyond what it can reasonably be expected to achieve, and placing a general burden upon it to promote Australia’s ‘national interest’ seems to be overstepping the mark.

Addressing ‘Offensive’ Patent Claims

The PSM Report recommended that a patentability exclusion should be provided, as permitted by the TRIPS Agreement, to protect ‘ordre public or morality’, that this should ‘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’, and that the Commissioner of Patents should be provided with ‘an explicit power to seek advice, from any person the Commissioner considers appropriate, to assist the Commissioner in applying this exclusion.’

My initial reaction to these recommendations was that they are ‘unnecessary, wasteful and impractical.’  However, I subsequently came around to the view that a general exclusion on ethical grounds may serve an important function in reassuring the wider public that the patent laws are not merely an amoral mechanism for placing monopoly powers in commercial hands.  I have argued more recently that it is unfortunate that the challenge to the Myriad BRCA ‘gene patent’ has been based, of necessity, on a narrow technical ground, because the true reason for objection – genuine concern about the propriety of government-sanctioned monopolies over human genetic material – is not a recognised basis for denying a patent under our law.

This is not to say that an exclusion on ethical grounds would necessarily prevent the patenting of genes, human or otherwise.  It would, however, provide a sound legal basis for addressing the issue of patentability by reference to the level of support among reasonable and fully-informed members of the Australian public.  There is no question that there are technologies which a significant subset of the community considers should not be the subject of a private monopoly right on the basis that this strongly and genuinely offends their deeply-held convictions.  Genetic technologies are just one contemporary example of a broader challenge to the patent system.

Consultation Questions

The three specific questions on which IP Australia is requesting feedback are as follows:
  1. Do you have a preference for either of the two options proposed for the Objects Clause?
    • If so, please explain the reasons for your preference.
    • If you disagree with the wording of both of these options, please explain which elements you disagree with and why.
  2. Do you agree with the wording proposed by ACIP for the patentability exclusion?
    • If you disagree with the wording, please explain which elements you disagree with and why.
  3. Do you agree with amending the Patents Act to explicitly provide the Commissioner of Patents with powers to seek advice on ethical matters?
    • If you disagree please explain why.
As noted above, submissions are due by 27 September 2013, and should be sent, preferably in Word or RTF format (additional PDF version optional), to consultation@ipaustralia.gov.au.  Any queries about the consultation process should be directed to Terry Moore, who may be contacted on (02) 6283 2632.

IP Australia will then consider the submissions, and undertake further consultation – including public exposure of the legislation drafting instructions.  This is substantially the same process followed in the case of the Raising the Bar reforms.


Barry Newman said...

Nice post, Mark. But I'm not sure how sound the legal basis would be. Surely reasonable and fully informed members of the public can have very different views on what is 'ethical'.

Mark Summerfield said...

Thanks Barry.

I doubt that the 'reasonable and fully informed member of the Australian public' is any more difficult to pin down than that old staple of the common law, the 'reasonable man'. Presumably this is not an actual person, but a legal fiction intended to stand in for the values of society. As I understand it, the intention is to translate the concept of ordre public into plain English.

It is possible to imagine hypothetical examples in which the application of this standard would be relatively uncontroversial -- apparatus, methods and systems for inflicting torture, for example. However, anything that actually matters is likely to be more contentious.

To the extent that the proposed exclusion may be workable, I am not sure that the wording is quite right. Opponents of gene patents, for example, may not be offended by the commercial exploitation of genetic technologies per se, but rather by the ability to obtain a monopoly right to do so.

This is not to say that I necessarily think that the reasonable and fully informed member of the Australian public would be wholly offended by the commercial exploitation of a patent monopoly over genetic materials. However, I do think that it is a legitimate question to ask, because a patent system which causes genuine offence to the public is liable to lack community support. The law does not only belong to patent holders and the IP profession. Indeed, we are very much in the minority here!


Barry Newman said...

I agree that it's a legitimate question to ask. I just can't see the proposed test making a difference. Simply adding an explicit 'ordre public' standard into the law strikes me as a solution in search of a problem.
Defining it in terms of 'commercial exploitation' adds a whole new level of uncertainty. Does the nature of the commercial exploitation matter, or is the test intrinsic to the patent subject matter or to the scope of the claim? What if the commercial exploitation is only mostly offensive, rather than wholly offensive?
My personal view is that the patent system has evolved over centuries to be very good at handling 'mechanical' inventions, but that transferring of these principles to newer areas (genetics, computer-implemented inventions) is not adequate. The commercial scope of a mechanical invention is nearly always limited to a particular narrow application. This is not the case in other areas of technology, and the disclosure/monopoly balance can become skewed.
I agree that it's a problem which patent holders and the IP profession are badly placed to address - we have an enormous vested interest. Nonetheless, if the problem is not addressed then we run the large risk of ad hoc changes to the system pushed by political interests. This sort of Band-Aid does little to alleviate that risk.

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