20 August 2013

A Conversation with the Commissioner of Patents (Part 2)

Q and AIn the first part of my conversation with Fatima Beattie, the Commissioner of Patents and Deputy Director General of IP Australia, we talked about her background and her role at IP Australia.

In this second part, the conversation moves on to patent reform.  In particular, we discussed the process which led to the greatest reform of the Australian patent laws since the current Patents Act came into force in 1991 – the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 – and about why the Commissioner sees those reforms as significant for Australia.

We also spoke about the ongoing and future consultations and reform proposals, including the creation of a single patent filing and examination processes for Australia and New Zealand, the implementation of a single regulatory regime for Australian and New Zealand patent attorneys, changes to Crown use and compulsory licensing provisions under the Australian Patents Act 1990, proposals relating to the definition of patentable subject matter, and ongoing reviews of the designs system and innovation patents.

Part 2: Reforming the Patent System

Mark Summerfield: I’d like to talk a little about patent reform. There’s been a lot of that and it’s still going on. I mean the note I’ve got here is that really we had about a decade of reviews by various bodies that were largely neglected by a succession of governments. We had the IP and Competition Review Committee which produced the Ergas report [PDF 1.1MB], as it is commonly-known, and we had reports on Crown use, experimental use, patentable subject matter, gene patenting from the ALRC and ACIP and others.

So, not much of that seemed to get implemented for a long time, and then around 2007 IP Australia started the consultation process that led to the Raising the Bar reforms, and eventually those, as we all know now, passed and enjoyed bipartisan support in both houses – which was obviously very good that there was no real controversy in the end.

So looking back on that whole process, what are your thoughts and feelings about what was achieved through that, and what in fact do you think were the most important and gratifying things about that lengthy, and no doubt very time-consuming process?

Fatima Beattie: I think that for any change to succeed it requires the environment to be receptive to the change, and that sometimes requires time for various players to come on board. We started talking about some of the changes that ended up in the Raising the Bar Bill – they were first aired as the ideal patent system – back in about 2005 as changes that we as a country needed to make. It takes a while for people to absorb what that means for them. It takes people time to actually understand how and why it’s important. So, I think change is something that needs to happen with a lot of consultation in order to get the bipartisan support. And it is about various factors coming together.

So yes, we had the various reviews. And all of those reviews contributed to the impetus for government to say, this is important for the community, it’s important for our IP system, it’s important for our international competitiveness – we need to do this. In terms of achievement, I think it’s fantastic. It’s the biggest reform in 20 years, and from my perspective I think it’s fantastic that we now have the patentability requirements that are equivalent to those of our major trading partners. We as a community are not providing monopolies for inventions that would not get a monopoly in other jurisdictions.

MS: Absolutely!

FB: As a net importer of technology I think that’s really important because we were overpaying, in my view, for that technology transfer. It's also better for our inventors who patent overseas. They like to work with the local Office, and I’d like them to continue to want to work with the local Office. But by the same token I want them to feel confident that when they get a patent in Australia that they’re highly likely to get one in the US or in Europe. So I think it’s fantastic.

The other major reform is the experimental use exemption, the regulatory approval exemption, and I think also that speeding up the process is really important.

Raising the Bar addresses what I call the inherent quality issues. And that’s about making sure that our legislation is comparable to that in other jurisdictions so that we’re not granting patents that are broader in Australia than they might be elsewhere – that’s really important. Now the onus is on IP Australia to make sure that we apply those standards vigorously and correctly, and that’s what I call the applied quality. So the two will now come together and hopefully we will be perceived as delivering high quality IP rights much more so than we were in the past when we were hampered by the lower inherent quality standard we had to abide by.

MS: I agree. I think there’ll be fine details where I’m probably on the record in various places as saying, I’m not sure that this is quite what I would have done, but overall I think the reforms have been fantastic, and I agree completely this should be a great thing for Australia.

And hopefully we’re looked upon a bit more positively as well, because as an attorney, giving advice to overseas clients, I would be saying ‘well actually you might be able to get a broader patent in Australia’. On the one hand it’s a positive thing you’re telling them, but on the other hand, as an Australian citizen it’s a little bit embarrassing in a way.

FB: You’ve noted on your blog the study done by IPRIA around examiners making a difference in the amendments made to patent family members in different jurisdictions. That study shows that we were hampered in the sort of changes that we could require applicants to make to their application. So it’s nothing to do with our applied quality, it is a lot to do with the inherent quality of the system that we administer.

MS: Now there’s still more to do. But it isn’t about inherent quality, it’s about other things around the operation of the patent system.

Probably I guess, one of the things that would be very high on IP Australia’s agenda right now would be the Single Economic Market reforms and the need to put us into a position where we can have this single regulatory regime for patent and trade mark attorneys in Australia and New Zealand, and the single examination process that’s been proposed as well.

And those were both in the IP Laws Amendment Bill 2013, which almost made it through Parliament before the election was called, as far as I can tell. But not with the bipartisan support that the Raising the Bar Act enjoyed in terms of some of the other things that were in that Bill – the Crown use and the generic medicines provisions which were in there as well.

So, I was wondering, if you can comment on this at all, was IP Australia surprised at the response of the Opposition to the generic medicines and the Crown use provisions that were in that amendment bill?

FB: Maybe what I can say is that Raising the Bar bill was an exemplary, best practice engagement model, in that we consulted extensively – we had the time to consult extensively, over two and a half years worth of consultation to get to the stage where we got to.

But sometimes policy initiatives need to be progressed much more quickly than the general stakeholders might wish. I think that there was consultation. Sometimes consultation, if it doesn’t take on board everything that people say, is not seen as being good consultation, but it’s consultation nonetheless because we’ve gone out there, we’ve got the views, we have listened to them, but we may not agree with those views necessarily in going forward, so I think that might be the difference on this occasion.

MS: So, after the election will the priority be on the Single Economic Market issues? Would you look to divide those out? Because my understanding from the timetable for some of these things is that they actually need to get through reasonably quickly, and there are also some technical amendments to correct some issues with Raising the Bar in there as well. And it does look like that particular package contains two different types of issues and that there are things that are probably not very controversial, and things which maybe are going to require more consultation.

FB: It’s really hard for me to say how this will progress into the future. It really depends on the government of the day. This was put forward, it hasn’t progressed to its end, so we now wait and see what happens after the election, and we will need to talk to the responsible Minister about how the government might wish to progress these changes going into the future.

MS: Moving even further into future you’re just beginning the consultation process on the ACIP Patentable Subject Matter recommendations – the object clause for the Patents Act, and the ethical exclusion that’s proposed there. Do you have any views on the timeframe for that consultation process, and when we can expect to see draft legislation for that?

FB: My understanding is that the issues papers have gone out, and the closing date’s 27th of September for those. Again it depends on the government of the day in terms of how they wish to progress those. So we will be talking to the new Minister, as soon as we know who the new Minister is. We will advise him or her about these issues in terms of what’s come through the consultation process.

MS: The third recommendation that ACIP made in relation to rewriting the manner of manufacture test in plain English – that appears to have been put aside at least for the moment. Do you have any comment on all that, and what might happen with it?

FB: Again, the government of the day was progressing those issues where it was able to progress them. The patentable subject matter issue is something that needs further consideration, and in part I think that was dependent on what comes out of the various legal proceedings currently underway. So if there are any changes that might result from that it would be appropriate to incorporate those. But that was the thinking of the government of the day – we will wait and see what happens into the future.

MS: And, innovation patents are still on the agenda, as far as I understand it. IP Australia opened a consultation last year, and accepted submissions, and doesn’t appear to have gone further with that at this stage, and we know that ACIP is due to report probably in the fairly near future. So do you see innovation patents, and the issues around those, becoming a larger part of this ongoing reform program in the future?

FB: Well, the Minister has asked ACIP to review the innovation patent and the design system, and so those issues papers, the innovation issues paper is out – I think the options paper is due to come out fairly soon. The design system issues paper should be out for consultation soon. So I think ACIP will continue to progress those. We’ll wait and see what happens post-election and depending on the government’s priorities of the day.

MS: And IP Australia’s suggestion that the test should just be the same inventive step as for standard patents, is that still on the table, or is that off the table?

FB: Again, it depends on what the government of the day wants to do in relation to that, so we will wait and see what the new Minister wishes to do.


The third and final part of my conversation with the Commissioner of Patents will be posted later this week, in which we discuss patent-eligibility of subject matter such as computer-implemented inventions, business processes, and genetic materials, as well as the challenges facing the patent system over the coming years.

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