Ivy Tsui is a JD candidate at Osgoode Hall Law School.
The Australian Government’s Advisory Council on Intellectual Property (ACIP) has released its report on the review of “Patentable Subject Matter” – detailing the types of inventions that should be patented.
On the whole, the ACIP seeks to standardize the proof for patentability and clarifies the language used in the current Patents Act 1990 (“Act”), with an awareness to promote economic endeavours and exclude materials due to ethical and social concerns. The current Act defines patentable inventions as those being directed to “a manner of manufacture”. However, this definition is obscure, ambiguous, and confusing. In 2008, the Minister for Innovation, Industry, Science and Research has requested the ACIP conduct a review on patentable subject matter. After receiving submissions from stakeholders and holding public discussion forums, the report makes four broad recommendations, which may be summarized as follows.
The first recommendation is to include a statement of objectives in the Act to outline its purpose. Specifically, the ACIP recommends that the statement of objectives should 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 technological knowledge, and Australian society as a whole.”
The second recommendation is to clarify the language used in the Patents Act 1990. First, clear and contemporary language drawn from an Australian High Court decision in National Research Development Corporation (NRDC) v. Commissioner of Patents should be used to define the requirement of patentable subject matters, meaning that patentability would be examined based on the principles of inherent patentability. Moreover, the Patents Act 1990 should be amended to improve clarity, to remove overlap of the patentable subject matter provision with the other provisions, and to include the requirement of usefulness to encompass the utility aspect of patentable subject matter.
The current patent system contains provisions to filter out subject matter that is undesirable due to ethical reasons. The specific exclusions prevent the patenting of human beings, plants, and animals, and the biological processes for the generation of human beings, plants, and animals. The third recommendation is to retain the specific exclusions in the Act. In addition, Article 27(2) of the TRIPS Agreement, which allows countries to exclude an invention from patentability if the exclusion is necessary to “protect ordre public or morality”, is endorsed by the ACIP. The test formulated by the ACIP is to preclude the patenting of inventions “the commercial exploitation of which would be wholly offensive to the ordinary reasonable and fully informed members of the Australian public.” The ACIP also suggested that the Commissioner of Patents to have “an explicit power to seek advice, from any person the Commissioner considers appropriate, to assist the Commissioner in applying the general patentability exclusion.”
The fourth recommendation is to strengthen the standard of proof for patentability. It is recommended that the Act should require the Commissioner to be satisfied on “the balance of probabilities” that the invention meets the patentability requirement. Currently, the applicant is given the “benefit of the doubt” about whether an invention is patentable.
The recommendations will provide some certainty and a uniform standard for the requirement of patentable subject matter. This is important because the patenting of genes, computer software, and business methods have raised considerable debate and concerns in the field. The Australian Government may now consider the recommendations and decide to accept, accept in part, or reject specific recommendations made in the report.
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