Implementation

The recommendations in ALRC 99 are addressed to a wide range of parties and not merely the Australian Government. For this reason, the report contains an implementation schedule listing the action required of different bodies to implement the recommendations in ALRC 99.

Recommendation 28–3 states that prior to the implementation of Article 17.4.7 of the Australia-United States Free Trade Agreement (AUSFTA) which deals with obligations in relation to copyright, the Australian Government should assess the need for an exception for researchers engaging in fair dealing for the purpose of research or study in relation to databases protected by copyright. This assessment was undertaken by the House of Representatives Standing Committee on Legal and Constitutional Affairs as part of its February 2006 report Inquiry into technological protection measures (TPM) exceptions. 

In March 2009, the ALRC made a submission to the Senate Standing Committee on Community Affairs Inquiry into Gene Patents. The ALRC drew on its experience from the ALRC Inquiry into the intellectual property aspects of genetic material and technologies, which culminated in ALRC 99. The Committee’s Report of the Inquiry into Gene Patents was presented to Government on 26 November 2010. It recommended that the government make a number of amendments to the Patents Act 1990 in line with recommendations in ALRC 99.

On 23 November 2011, the Federal Government tabled its response to ALRC 99. As well as addressing recommendations in the ALRC Final Report, the Government also responded to the recommendations of the 2010 Senate Community Affairs Committee’s report on Gene Patents and the 2011 Advisory Council on Intellectual Property’s report on Patentable Subject Matter. The response accepts the majority of the recommendations in all three reports, including the ALRC’s recommendation to introduce a statutory research exemption into the Patents Act 1990. 

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 passed into law on 15 April 2012.  The Act implements key recommendations of  Genes and Ingenuity by amending the Patents Act:

• to change the definition of ‘useful’ so as to require that a patent specification discloses a ‘specific, substantial and credible’ use for the claimed invention;
• to introduce a statutory exemption from patent infringement for research and experimental activities; and
• to require that the balance of probabilities standard apply to all statutory requirements for patentability that are relevant at the stage of examination.

Generally, the Act addresses concerns that the thresholds set for the grant of patents in Australia—including gene patents—were  too low, suppressed competition and discouraged follow-on innovation, and particular concerns that patents are granted for inventions that are not sufficiently inventive.