Part B. Patent Laws and Practices

5. Domestic Legal Framework

5–1 IP Australia should:

1. assess the impact of patent fees on the actual term of Australian patents; and
2. periodically review the structure and quantum of patent fees to ensure that fees are set at levels appropriate to discourage patent holders from maintaining patents that lack real commercial value.

6. Patentability of Genetic Materials and Technologies

6–1 Patent applications relating to genetic materials and technologies should be assessed according to the same legislative criteria for patentability that apply to patent applications relating to any other type of technology.

6–2 The responsible Minister should initiate an independent review of the appropriateness and adequacy of the ‘manner of manufacture’ test as the threshold requirement for patentable subject matter under Australian law, with a particular focus on the requirement that an invention must not be ‘generally inconvenient’.

6–3 The Commonwealth should amend the Patents Act 1990 (Cth) (Patents Act) to:

1. include ‘usefulness’ as a requirement in the examination of an application for a standard patent and in the certification of an innovation patent;
2. provide that an invention will satisfy the requirement of ‘usefulness’ only if the patent application discloses a specific, substantial and credible use;
3. require the Commissioner of Patents to be satisfied on the balance of probabilities that the requirement of ‘usefulness’ is made out in order to accept an application for a standard patent or to certify an innovation patent; and
4. include ‘lack of usefulness’as a basis upon which an accepted application for a standard patent may be opposed, in addition to its current role as a ground for revocation. (See also Recommendation 8–3.)

6–4 IP Australia should develop guidelines, consistent with the Patents Act, the Patents Regulations 1991 (Cth) and existing case law, to assist patent examiners in applying the ‘usefulness’ requirement. The guidelines should outline factors relevant to determining whether a use disclosed in a patent application is specific, substantial and credible to a person skilled in the relevant art.

7. Exclusions from Patentability

7–1 The Patents Act 1990 (Cth) should not be amended:

1. to exclude genetic materials and technologies from patentable subject matter;
2. to exclude methods of diagnostic, therapeutic or surgical treatment from patentable subject matter; or
3. to expand the existing circumstances in which social and ethical considerations may be taken into account in decisions about granting patents.

Rather, social and ethical concerns should be addressed primarily through direct regulation of the use or exploitation of a patented invention.

8. Patent Office Practices

8–1 To ensure the ongoing competence of Australian patent examiners in examining patent applications, IP Australia should enhance its efforts to provide examiners with education and training in areas of technology relevant to their particular specialty. IP Australia should review and update its education and training programs regularly so that new developments can be incorporated as required.

8–2 IP Australia should develop examination guidelines, consistent with the Patents Act 1990 (Cth) (Patents Act),the Patents Regulations 1991 (Cth) and existing case law, to explain how the criteria for patentability apply to inventions involving genetic materials and technologies.

8–3 The Commonwealth should amend the Patents Act to require patent examiners to be satisfied on the balance of probabilities when assessing all statutory requirements for patentability that are relevant at the stage of examination. (See also Recommendation 6–3.)

9. Challenging and Enforcing Patent Rights

9–1 IP Australia should develop and regularly update a searchable online database comprising patents and published patent applications. The database should:

1. be accessible to the public through IP Australia’s website;
2. provide user-friendly access and search capabilities on a wide variety of bases; and
3. as soon as practicable, provide full-text searching of all complete specifications of published Australian patent applications and granted patents.

9–2 Information about patent litigation should be readily accessible to the public. To this end:

1. the Commonwealth should amend the Patents Act 1990 (Cth) (Patents Act) to require courts exercising jurisdiction under the Act to give written notice to the Commissioner of Patents when a legal proceeding to challenge or enforce a patent is commenced, and when a decision or judgment is given in any such proceeding;
2. the Commissioner of Patents should include information about any such notice in the file of a patent and make the information readily available, for example in the Official Journal of Patents and in the patents database on IP Australia’s website; and
3. courts exercising jurisdiction under the Patents Act should amend their Rules of Court, as necessary, to give effect to this Recommendation.

10. The Role of Courts and Tribunals in Patent Disputes

10–1 Courts exercising jurisdiction under the Patents Act 1990 (Cth) (Patents Act) should continue to develop their practices and procedures for dealing with patent matters in order to promote the just, efficient and cost effective resolution of patent disputes.

10–2 Courts exercising jurisdiction under the Patents Act should continue to develop procedures and arrangements to allow judges to benefit from the advice of assessors or scientific advisors in litigation involving patents over genetic materials and technologies.