The draft changes address two issues: adding an objects clause to the Patents Act and exclusion from patentability for offensive inventions. The Advisory Council on Intellectual Property (ACIP) researched and produced recommendations on both topics.
IP Australia’s consultation paper explains that the objects clause will state the underlying purpose of the patent laws and assist courts and patent examiners in interpretation of the law.
The consultation paper’s first option for the objects clause adopts language used by the ACIP’s 2010 report on patentable subject matter: “he purpose of the legislation as being to provide an environment that promotes Australia’s national interest and enhances the well-being of Australians by balancing the competing interests of patent rights holders, the users of technology, and Australian society as a whole." This language is in turn derived from article 7 of TRIPs.
The proposal also seeks to amend section 50 of Patents Act, which allows the Commissioner of Patents to refuse to grant a patent for an invention where the use is contrary to law. One concern is that section 50 may be contrary to article 27 of TRIPs, which states that a country may not refuse to grant patent protection for an invention “merely because the exploitation is prohibited by their law”.
In response, the ACIP suggests that section 50 be amended to exclude patent protection for “an invention the commercial exploitation which would be wholly offensive to the ordinary reasonable and fully informed member of the Australian public”.
This is the second proposed amendment to Australia’s Patents Act since the Raising the Bar amendments passed last year. In May, the Intellectual Property Laws Amendments Bill 2013 was introduced by the House of Representatives and is under consideration.
IP Australia is seeking public comment on the proposed changes. Submissions may be made to consultation@ipaustralia.gov.au until September 27.
