Changes proposed to patentable subject matter in Australia

On 16 February 2011, the Australian Government Advisory Council on Intellectual Property (ACIP) released its report on patentable subject matter in Australia following a review which included considering the submissions of interested parties. The terms of reference for the review asked ACIP to inquire, report and make recommendations to the Australian Government on patentable subject matter.

The report recommends a number of changes to Australia’s patent legislation, the Patents Act 1990, including:

• Amending the Act to require the Commissioner of Patents to be satisfied on the balance of probabilities that an invention is a patentable invention before granting a patent for it. Currently, the applicant is given the benefit of the doubt about whether an invention is patentable. The proposed change will align the standard of proof with that used by the Commissioner to consider novelty and inventive step.
• The introduction into the Act of a general exclusion to preclude the patenting of inventions the commercial exploitation of which would be wholly offensive to the ordinary, reasonable and fully informed member of the Australian public. It is also recommended that the Commissioner be able to obtain advice about the application of this exclusion from any person considered appropriate.
• Removal of the “general inconvenience” proviso in the definition of an “invention” in the Act by removing the reference to section 6 of the Statute of Monopolies 1623 from the definition.
• Defining patentable subject matter using language that embodies the principles of inherent patentability developed by the High Court in the NRDC case [1959] HCA 67, namely that the invention be an artificially created state of affairs in the field of economic endeavour. No changes are proposed to these principles.
• Including a statement of objectives in the Act to outline its purpose and provide general guidance in the application of the legislation. At present, the Act does not contain any statement of objectives.

Of relevance to the current debate in Australia about the patentability of human genes is the conclusion by ACIP that no persuasive case has been made to introduce a specific exclusion to prevent the patenting of human genes and genetic products.

The Australian Government may decide to accept, accept in part, or reject any of the recommendations made in the report. The response of the Australian Government will be awaited with interest.

Adrian Evans – February 2011.