AusBiotech responds to IP consultations


Members are invited to comment this week on responses to two consultations underway with IP Australia, regarding changes to the inventive step for patent claims and the introduction of an objects clause.

IP Australia has five simultaneous public consultations on IP policy matters open at present, four of which relate to IP Australia’s proposed implementation of the Government’s response to the Productivity Commission’s (PC) 2016 report on Australia’s IP arrangements.

AusBiotech has prepared draft responses to the consultations on amending the inventive step and introducing an objects clause, which close on Friday 17 November 2017.

The legislative amendments relating to these issues expected to be included in a Bill for introduction to Parliament in 2018.

Paper 1: Amending inventive step requirements for Australian patents

This paper discusses the proposed implementation of the Government’s response to recommendations 7.2 and 7.3 of the PC Report. The PC recommended that IP Australia further align the inventive step standard for the grant of a patent in Australia with that of the European Patent Office. The Government supported these recommendations, and the paper puts forward options for changes to the Patents Act 1990, and the guidance that would be included in the explanatory materials accompanying the changes.

AusBiotech says in its submission that it would like to see the current arrangements for the inventive step given time to settle and be assessed before further change is considered.  The ‘Raising the Bar’ legislation was and still is considered sound and the recommendation of the PC was made such a short time after the legislation had been enacted that it was too soon to assess its impact – let alone make disruptive and premature change.

AusBiotech’s draft response can be found here: AusBiotech draft response to ‘Paper 1: Amending inventive step requirements for Australian patents (August 2017)’ and members are invited to comment until midday 17 November.

IP Australia’s consultation Paper 1 can be found online.

Paper 2: Introduce an objects clause into the Patents Act 1990

The Government’s response supports the PC recommendation (7.1) that an objects clause be introduced into the Patents Act 1990.

The purpose of an objects clause would be to provide additional clarity and guidance on the purpose of legislation, assists the courts in interpreting the legislation, and can be used to resolve uncertainty and ambiguity. This paper discusses options for the precise wording of an objects clause to set out the purpose of the patents legislation.

AusBiotech holds the view that neither of the options proposed for an objects clause are workable and a suitable option should be more specific. The purpose of a Patents Act is not to benefit society in some nebulous fashion, it is to benefit society by helping innovators, and people who invest in innovation, to be motivated to do so – and by that mechanism, to bring new products and services to the market that will benefit society.

IP Australia’s consultation Paper 2 can be found online.

AusBiotech’s draft response can also be found online.

Member responses to both papers can be addressed to Deputy CEO of AusBiotech, Lorraine Chiroiu at or 03 9828 1400.

Implementation of other measures – such as phasing out of the innovation patent system, the plant breeder’s rights recommendation and the majority of the trade mark recommendations - covered by the Government’s response to the PC report will be consulted on separately.