Duration of patent protection

5.43 A standard patent generally has a term of 20 years, commencing on the date of the patent; an innovation patent has a term of 8 years (see Figure 5–1).[67] The term of a standard patent relating to ‘pharmaceutical substances’ may be extended in certain circumstances.[68]

5.44 As discussed in Chapter 4, art 33 of the TRIPS Agreement requires member States to provide patent protection for a term of not less than 20 years from the filing date.[69] Article 27(1) requires member States to make patent protection available for all inventions, without discrimination as to the field of technology to which an invention relates.[70] The Patents Act was amended in 1994 to extend the term of protection for a standard patent from 16 years to 20 years in order to bring Australian patent law into conformity with the TRIPS Agreement.[71]

5.45 While the TRIPS Agreement provides some flexibility to member States in developing their own patent laws, the minimum term of patent protection is not subject to exceptions or qualifications. The TRIPS Agreement does, however, permit member States to require compliance with reasonable procedures and formalities as a condition of the acquisition or maintenance of intellectual property rights.[72] Such procedures and formalities include the payment of fees for the filing and processing of a patent application, and for maintaining existing patent rights.

5.46 In addition, the Australia–United States Free Trade Agreement contains a provision that might affect the term of patent.[73] Article 17.9.8 provides that, if there are unreasonable delays in a Party’s issuance of patents, that Party shall provide a means to adjust the term of the patent to compensate for the delay.[74] If, in the future, there is evidence of unreasonable delay in the grant of Australian patents it may be necessary to amend the Patents Act to provide an extension of the patent term.

[67]Patents Act 1990 (Cth) ss 67–68. The ‘date of the patent’ is the date on which the complete specification was filed or, if applicable, a different date determined by the Patents Regulations: Patents Act 1990 (Cth) s 65; Patents Regulations 1991 (Cth) r 6.3.

[68]Patents Act 1990 (Cth) ss 70–79A. The provisions for pharmaceutical patent term extension are currently under review: Department of Industry Tourism and Resources, Discussion Paper on Patent Extensions and Springboarding, and the Effect on Generic Pharmaceuticals Manufacturers in Australia (2002).

[69] TRIPS Agreement, art 33.

[70] TRIPS Agreement, art 27(1).

[71] The 20-year patent term applies to all standard patents granted after 1 July 1995, or granted prior to that date for a 16-year term that had not expired as of that date: Patents (World Trade Organisation Amendments) Act 1994 (Cth) s 7.

[72] TRIPS Agreement, art 62(1).

[73] Australia and United States, Australia–United States Free Trade Agreement, 18 May 2004.

[74] An unreasonable delay is deemed to include a delay in the issuance of a patent of more than four years from the date of filing an application, or two years after the request for an examination has been made, whichever is later. However, delays that are attributable to the actions of a patent applicant, or any opposing third party, need not be covered: Ibid, art 17.9.8.