New Consultation on Proposed Objects Clause and Patentability Exclusion

IP Australia has released a new consultation paper on a proposed objects clause and patentability exclusion to be included in the Patents Act 1990 (Cth). Final submissions should be made by 27 September 2013.

In November 2011, the Government responded to three reports on gene patents and patentable subject matter:

• Senate Community Affairs References Committee Gene Patents Report
• Advisory Council on Intellectual Property report Patentable Subject Matter
• Australian Law Reform Commission report Genes and Ingenuity: Gene Patenting and Human Health.

The Government accepted recommendations to amend the Patents Act 1990 to introduce:

• an objects clause to assist in the interpretation of the Act, and
• an exclusion from patentability for inventions, the commercialisation of which would be considered wholly offensive by the Australian public.

In recent years there has been considerable debate about the
extent to which the patent system should balance economic and social concerns, particularly with respect to the types of inventions that can be patented. Much of this debate has centred on the patenting of isolated gene sequences and the impact of this on access to affordable healthcare.

Reflecting these concerns, over the past 11 years there have
been three reviews inquiring into the issue of patentable subject matter,
particularly as it relates to the patenting of isolated gene sequences. The
reviews were:

• The Australian Law Reform Commission (ALRC) 2004 ‘Genes and Ingenuity’ Report
• The Senate Community Affairs Committee (SCAC) 2010 ‘Gene Patents’ Report
• The Advisory Council on Intellectual Property (ACIP) 2010 ‘Patentable Subject Matter’ Report.

The recommendations made by these reviews were considered by
the Government in its November 2011 response to the Gene Patents Report. A number of the recommendations have now been implemented,
including:

• changes to raise patent standards, implemented by the IP Laws Amendment (Raising the Bar) Act 2012 (Cth)
• establishment of a Patent Audit Committee, announced by the Parliamentary Secretary for Climate Change, Industry and Innovation on 30 May 2013
• introduction of a broad exemption from patent infringement for research activities, implemented by the Raising the Bar Act.

A further recommendation to clarify the Crown use provisions in the Patents Act is included in the amendments proposed in the IP Laws Amendment Bill 2013. The Bill was passed by the House of Representatives on 25 June 2013 and introduced into the Senate on 28 June 2013. This bill has subsequently lapsed due to proroguement of Parliament.

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IP Australia Consultation