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Australia: Australian patent law set to change

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 measures include:

  • amending inventive step requirements for Australian patents;
  • introducing an objects clause into the Patents Act 1990;
  • 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.

Inventive step

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.

Objects clause

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.

Next steps

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.

Andrea Ruhrmann

FB Rice
Level 23, 44 Market St Sydney NSW 2000, Australia
Tel: +61 2 8231 1000
Fax: +61 2 8231 1099


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