IP measures open for comment


IP Australia has opened a consultation on the exposure draft of the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2018 and accompanying explanatory material.

These measures include:

  • Amending inventive step requirements for Australian patents;
  • Introducing an objects clause into the Patents Act 1990 (Patents Act);
  • Phasing out of the innovation patent system.

AusBiotech made a submission to the previous consultations in 2017 on the options papers for some of the measures in the draft legislation.

AusBiotech, informed by its IP Advisory Panel, commented on amending the inventive step for patent claims and introducing an objects clause.

AusBiotech said 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.

The purpose of the proposed 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.

The consultation paper on an objects clause discussed two options for the precise wording of an objects clause to set out the purpose of the patents legislation.

AusBiotech said that the Industry is not keen on Option A nor Option B overall, and would prefer to see no objects clause or if one is considered necessary, an objects clause that is much more specific.

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.

The Bill also includes amendments to the Crown use provisions of the patents and designs legislation and compulsory licensing provisions in the Patents Act, in schedules 2-4.

Finally, draft legislation contains measures to streamline processes within the Patents and Trade Marks Acts and make technical improvements to the legislation. These measures are included in Schedules 5-7 to the draft Bill.

Legislation to implement earlier parts of the Government’s response to the PC was introduced into the Australian Parliament and passed the House of Representatives on 27 June 2018.

IP Australia is inviting submissions on the exposure draft by 31 August 2018. Further information is available on IP Australia’s consultation page.