02.08.2010
5.11 Australian patent law recognises two principal types of patents: standard patents and innovation patents. An applicant for a patent may elect to obtain protection for an invention under either system. Figure 5–1 outlines the key features of, and the difference in the scope of protection conferred by, standard and innovation patents.
Standard patents
5.12 A standard patent is the basic form of patent protection for inventions under Australian law and is consistent with the minimum requirements for patent protection under the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement).[12] Unless otherwise indicated, references to an Australian patent and discussions of patent rights in this Report relate only to the standard patent system.
Innovation patents
5.13 The innovation patent is a ‘second tier’ of protection, which was introduced in 2001 to replace the petty patent system.[13] Innovation patents are intended to provide protection for ‘lower level’ inventions for which standard patent protection is not available and which are not covered by the designs legislation.[14] DP 68 contained a detailed discussion of the innovation patent system.[15]
5.14 The ALRC received a small number of submissions that suggested it would be preferable for an invention involving genetic materials and technologies to be protected only by the innovation patent system. In general, these submissions were critical of genetic sequences being treated as inventions for the purposes of patent law and therefore considered the shorter term of patent protection provided by an innovation patent to be more appropriate.[16]
Figure 5–1 Features of standard patents and innovation patents
| Features | Standard patent | Innovation patent |
| Term | 20 years (s 67) Extension of up to 5 years available for certain pharmaceutical patents (ss 70–79A) | 8 years (s 68) |
| Number of claims | No limit | Maximum of 5 claims (s 40(2)(c)) |
| Inventions excluded from patentability, or excludable at the discretion of the Commissioner of PatentsI | Human beings and the biological processes for their generation (s 18(2)) Inventions whose use would be contrary to law (s 50(1)(a)) Inventions capable of application as a food or medicine that are a mere admixture of known ingredients (s 50(1)(b)) | Same as for a standard patent,II and Plants and animals and the biological processes for the generation of plants and animals (s 18(3), (4)) |
| Level of invention requiredIII | ‘Inventive step’ over the prior art (s 7(2)–(3), sch 1) | ‘Innovative step’ over the prior art (s 7(4)–(6), sch 1) |
| Review by Patent Office prior to grant | Substantive review for compliance with the requirements for patentability (ss 44–49) | Formalities check only; no substantive review unless requested (ss 52, 120(1A)) |
Notes
I See Chapter 7 for a discussion of the exclusions from patentable subject matter.
II See ss 18(2), 101(b)(2)(d) and 101B(4) of the Patents Act.
III See Chapter 6 for a discussion of the requirements for patentability. The requirements to obtain an innovation patent are the same as those for a standard patent, except as noted.
5.15 However, as DP 68 indicated, the features of the innovation patent system—in particular, the lack of substantive pre-grant examination of an application—make it unsuitable as the sole form of patent protection available for genetic materials and technologies.[17] Several submissions to the Inquiry supported this conclusion.[18] In addition, a few submissions considered that the shorter term of protection conferred by an innovation patent would be undesirable because the development and commercialisation of genetic products may not be complete until many years after patent protection is first granted.[19] Limiting patent protection for genetic inventions to the innovation patent system may also be inconsistent with Australia’s obligations under the TRIPS Agreement.[20] In light of this, this Report does not contain any substantive discussion of the innovation patent system.
Patents of addition
5.16 The Patents Act also provides for the grant of a ‘patent of addition’ for an improvement in, or modification to, an invention claimed in a standard patent that has already been granted.[21] A patent of addition may be obtained only by the owner of the earlier patent, or a person authorised by the owner.[22] The term of a patent of addition expires at the same time as that of the patent on the main invention.[23]
[12]Agreement on Trade-Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization), [1995] ATS 8, (entered into force on 1 January 1995). See further Ch 4.
[13] See: Advisory Council on Industrial Property, Review of the Petty Patent System (1995); Intellectual Property and Competition Review Committee, Review of Intellectual Property Legislation under the Competition Principles Agreement (2000), 157. Other jurisdictions also provide a ‘second tier’ of patent protection: Advisory Council on Industrial Property, Review of the Petty Patent System (1995), Ch 3; D Ryan, ‘Innovation Patents: What is their Likely Impact?’ (2002) 48 Intellectual Property Forum 30, 31.
[14] G McGowan, ‘The New Innovation Patent System: Will It Work?’ (2002) 76 Law Institute Journal 64; Advisory Council on Industrial Property, Review of the Petty Patent System (1995), rec 2. For judicial consideration of the innovation patent system, see Datadot Technology Ltd v Alpha Microtech Pty Ltd [2003] FCA 962.
[15] Australian Law Reform Commission, Gene Patenting and Human Health, DP 68 (2004), Ch 5.
[16] For example, A Bankier, Submission P19, 30 September 2003; South Australian Government, Submission P51, 30 October 2003; Department of Health Western Australia, Submission P53, 3 November 2003.
[17] Australian Law Reform Commission, Gene Patenting and Human Health, DP 68 (2004), [5.64]–[5.68], [5.72]–[5.78].
[18] Australian Centre for Intellectual Property in Agriculture, Submission P12, 29 September 2003; Department of Industry Tourism and Resources, Submission P36, 13 October 2003; IP Australia, Submission P56, 4 November 2003; Queensland Government, Submission P57, 5 January 2004; Commonwealth Department of Health and Ageing, Submission P65, 28 January 2004.
[19] Walter and Eliza Hall Institute of Medical Research, Submission P39, 17 October 2003; A McBratney and others, Submission P47, 22 October 2003.
[20] Department of Foreign Affairs and Trade, Submission P29, 2 October 2003; GlaxoSmithKline, Submission P33, 10 October 2003; Department of Industry Tourism and Resources, Submission P36, 13 October 2003; Genetic Technologies Limited, Submission P45, 20 October 2003; A McBratney and others, Submission P47, 22 October 2003; Davies Collison Cave, Submission P48, 24 October 2003; South Australian Government, Submission P51, 30 October 2003; IP Australia, Submission P56, 4 November 2003; Queensland Government, Submission P57, 5 January 2004; Department of Health Western Australia, Submission P53, 3 November 2003; AusBiotech Ltd, Submission P58, 7 November 2003.
[21]Patents Act 1990 (Cth) s 81. Under s 80, a patent of addition is not available in relation to an innovation patent.
[22] Ibid s 81(1)(b).
[23] Ibid s 83.