Domestic legal framework

5.3 Australian patent law operates within an international legal framework, which shapes certain procedural and substantive aspects of the patent system. The principal international conventions relevant to patent law are discussed in Chapter 4.

5.4 Australia has enacted legislation that regulates patenting practices within the Australian ‘patent area’[2] with respect to inventions involving any type of technology. The procedures for obtaining a gene patent in Australia are, broadly speaking, the same as those that apply to patents claiming any other type of technology. The discussion of patent law and practice in this chapter is therefore cast in general terms.


5.5 Section 51(xviii) of the Australian Constitution grants the Commonwealth Parliament power to make laws with respect to ‘copyrights, patents of inventions and designs, and trade marks’. Pursuant to this power, the Parliament has enacted the Patents Act 1990 (Cth) (Patents Act) and the Patents Regulations 1991 (Cth) (Patents Regulations).[3]

5.6 Patent protection in most countries is available for inventions that are new, involve an inventive step, and have a useful application. In Australia, the Patents Act provides that an invention is patentable if it:

  • is a ‘manner of manufacture’—that is, the invention is appropriate subject matter for patent protection;

  • is novel;

  • involves an inventive or innovative step;

  • is useful; and

  • has not been used secretly within Australia before the priority date of the patent application.[4]


5.7 The Australian patent system is administered by the Patent Office of IP Australia.[5] IP Australia is a division of the Department of Industry, Tourism and Resources, but operates independently and reports directly to the Minister.[6]

5.8 Under the Patents Act, the Commissioner of Patents has the power to grant a patent upon an application being filed with and examined by the Patent Office. IP Australia has developed the Patent Manual of Practice and Procedure (the Manual) to assist Australian patent examiners in applying the Patents Act and Patents Regulations.[7] IP Australia’s examination practices are discussed in this chapter and in Chapter 8.

5.9 State and federal courts and the Administrative Appeals Tribunal (AAT) also have a role in administering the patent system. Decisions of the Commissioner of Patents may be subject to review by the AAT or the Federal Court of Australia.[8] The AAT may undertake merits review of the Commissioner’s decisions with respect to certain procedural matters prescribed by the Patents Act.[9] A direct application may be made to the Federal Court for judicial review in relation to other decisions of the Commissioner; essentially those related to the grant of patents or matters closely allied to the grant (for example, amendments to patent specifications and revocations).[10]

5.10 The Federal Court and state and territory Supreme Courts share original (first instance) jurisdiction over matters relating to the exploitation and enforcement of patent rights, including challenges to patent rights, infringement proceedings and compulsory licences.[11] The AAT has no jurisdiction in relation to such issues. Jurisdictional matters are considered further in Chapter 10.

[2] ‘Patent area’ is defined to include Australia, the Australian continental shelf, the waters above the Australian continental shelf, and the airspace above Australia and the Australian continental shelf: Patents Act 1990 (Cth) sch 1.

[3] Chapter 2 outlines the history of Australian patent legislation.

[4]Patents Act 1990 (Cth) s 18.

[5] IP Australia also administers trademark and design rights in Australia.

[6] IP Australia, What is IP Australia?, <> at 16 June 2004.

[7] IP Australia, Patent Manual Practice and Procedure Volume 1: International (2003); IP Australia, Patent Manual of Practice and Procedure Volume 2: National (2002); IP Australia, Patent Manual of Practice and Procedure Volume 3: Oppositions, Courts, Extensions & Disputes (2002).

[8] Some decisions of the Commissioner (primarily those made under the Patents Regulations) are not generally subject to review by either the AAT or the Federal Court. See further: Administrative Review Council, Administrative Review of Patents Decisions: Report to the Attorney General, Report 43 (1998).

[9]Patents Act 1990 (Cth) s 224; Patents Regulations 1991 (Cth) r 22.26. Decisions of the AAT on matters of law may be appealed to the Federal Court: Administrative Appeals Tribunal Act 1975 (Cth) s 44.

[10]Patents Act 1990 (Cth) s 154. The Federal Court also has jurisdiction to review decisions of the Commissioner under the Administrative Review (Judicial Decisions) Act 1977 (Cth) and under s 39B of the Judiciary Act 1903 (Cth) on the basis of legal or procedural error. In addition, judicial review by the High Court of Australia is available under s 75(v) of the Australian Constitution.

[11]Patents Act 1990 (Cth) s 155.