Forthcoming changes to Australian patent law: objects clause in, but no changes to the inventive step – for now.

 

On 29 October 2018 IP Australia released its response [188.4KB] to feedback on the second tranche of legislative amendments proposed arising from the Productivity Commission’s report on Intellectual Property Arrangements in Australia.

Response details on key practical issues

Most notably:

(1) The changes to inventive step are not to be made….yet. But there remains a commitment to shift towards the EU ‘problem-solution’ test.

In general feedback to the Government’s proposals to move the law of inventive further towards a more overtly European standard, respondents pointed out that the last changes made to the Act in 2013 had hardly had time to settle, that the proposed legislation perhaps merely rearranged the section under discussion, and that the proposal did not recognise the requirement in Australian law to consider the common general knowledge of the person skilled in the art in considerations of inventive step.

IP Australia has effectively conceded these issues, and will undertake further analysis and feedback before proceeding.

(2) The addition of an ‘objects’ clause is to proceed.

  • The response rejects the assertion that the introduction of the clause will effect standards for patent eligibility because, it asserts, the test for patent eligibility will remain the old English requirement for a ‘manner of manufacture’.
  • It also rejects the notion that the requirement for ‘technological’ innovation will exclude certain subject matter in g. biotech or software, or simple mechanical inventions on the basis that the ordinary meaning of the term “technological” is “the application of scientific knowledge for practical purposes” and this would not exclude any of those sorts of advances.
  • It also rejects the notion that the introduction will create unmanageable litigation uncertainty saying that while there is a risk that the clause might result in some uncertainty for users of the patent system in the short-term, the objects clause is not intended to provide a ground to challenge a patent on the basis of its subject matter.

It is clear that there is no intention that the proposed objects clause override existing Australian jurisprudence. What is intended is that the proposed objects clause provide certainty about the objectives of the patent system and thus ensure that the interests of producers, owners and users of technology are balanced, most notably, ‘assist the courts in situations where there is uncertainty or ambiguity in the meaning of a provision’.

Hence the Government says it remains committed to the introduction of an object clause which will likely read:

“The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.”

Next steps

With the recent political upheaval in the Australian parliament over leadership, and angry voters in Australia’s fastest growing state, Victoria, expressing their disappointment in the policy initiatives of the conservative parties currently in power in Canberra, it remains to be seen whether the standing or future government has IP reform high up its list of priorities. With Australia casting its eyes towards the federal election due no later than 18 May 2019, it may be a while before we see any form of this Bill introduced into Parliament.

For now, IP Australia is seeking further consultation, this time on the exposure drafts of the regulations [391.2KB] and the explanatory memorandum. Interested parties are invited to make written submissions by 21 December 2018. If you’re keen to contribute and wish to remain anonymous, please contact us.

 

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