Proposed changes to the Australian Patents Act 1990 have
been advanced in recent weeks as Australia looks to address the
long-standing perception that its intellectual property
arrangements fall short of the required standard. On July 23
2018, IP Australia announced a consultation on proposed
legislative amendments included in Schedule 1 to the
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2018. The proposed
- amending inventive step requirements for Australian
- introducing an objects clause into the Patents Act
- phasing out of the innovation patent system.
The decision to implement these measures has already been
taken and the consultation concerns the form of the amendment
to the Patents Act.
The draft provision aims to increase the threshold for
inventive step by aligning the requirement more closely with
that of Article 56 of the European Patent Convention (EPC):
"S.7(2) For the purposes of this Act, an invention is
taken to involve an inventive step when compared with the
prior art base if the invention is not obvious to a person
skilled in the relevant art."
The Draft Explanatory Memorandum to the proposed legislative
changes states that the purpose of adopting wording similar to
Article 56 EPC is for the problem-and-solution approach
followed by the European Patent Office to become the normal
approach adopted by IP Australia for the examination of
inventive step. The approach is expected to increase the
threshold for inventive step. The statutory requirement for
inventive step was amended only a few years ago and time will
tell as to whether this further amendment to the statute, if
approved, will achieve the desired effect.
An objects clause is proposed to the Patents Act "to provide
additional clarity and guidance to the purpose of the
legislation". The proposed objects clause includes the wording:
"to provide a patent system in Australia that promotes economic
wellbeing through technological innovation and the transfer and
dissemination of technology."
The Explanatory Memorandum states that the clause is not
intended to narrow or change the subject matter eligibility
threshold for grant of a patent. Nevertheless, the consultation
focused on the use of the word 'technological' in the clause,
and it is foreseeable that such a clause may potentially be
invoked by anyone seeking to limit the boundaries of what
should be considered to be patentable subject matter.
Phasing out of innovation patents
A long process for phasing out of the innovation patent is
proposed. While new applications for innovation patents will no
longer be possible following commencement of the legislation,
the legislation will not apply to any application for an
innovation patent that is filed before the commencement of the
legislation or the claims of which have a priority date before
the commencement date (e.g. divisional applications or
applications converted from a standard to an innovation
patent). Innovation patents will therefore be with us until the
last of these expires.
The consultation period was completed on August 31 2018. The
resulting legislation will likely commence in 2019.
Meanwhile, on August 24 2018, royal assent was granted to
the Intellectual Property Laws Amendment (Productivity
Commission Response Part 1 and Other Measures) Act 2018,
the provisions of which underwent a similar public
consultation at the end of 2017. The Act, insofar as it relates
to the Patents Act, relates mainly to administrative matters
and also removes a requirement for patentees to provide the
Department of Health with certain data relating to
pharmaceutical patents with an extended term.
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