The recent Australian High Court case of Northern Territory v Collins [2008] HCA 49 highlights the problems of the Australian contributory infringement legislation. The legislation was originally introduced in an attempt to align Australia's patent laws with those of the United States and other major countries. However, the convoluted operation of the legislation has left it doubtful that it applies to method patents per se.

In the Collins case, the patent at issue was for a method of extracting a particular oil from a particular tree species. The Northern Territory Government had licensed a third party to harvest the trees from crown lands. Vincent Collins then sued the Northern Territory for contributory infringement.

A majority of the Court held that the Northern Territory was not liable under a "staple commercial product" exemption in the legislation, in that the trees had other possible uses and would be considered a staple commercial product.

Further, two judges refused to look to the intent and background of the legislation, preferring to apply a close analysis of the legislative words. As the legislation is drafted primarily towards product-type patents, their Honours' analysis continued to cast some doubt as to whether the legislation can be applied to method patents.

Patentees of Australian method type patents must therefore tread carefully when alleging contributory infringement.

Peter Treloar

Shelston IP
Level 21, 60 Margaret Street
Sydney NSW 2000
Australia
Tel: +61 2 9777 1111
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