The Australian Government has proposed significant changes to Australian patent law following an inquiry into the IP system recently completed by its advisory body, the Productivity Commission. These include:
- Amending the inventive step threshold to reflect that of the European Patent Office
- Phasing out innovation patents
- Requiring applicants to identify an invention’s technical features in their claims, and
- Adding an objects clause to the Patents Act.
The Government supports amending the Patents Act so that an invention will only involve an inventive step if, having regard to the prior art base, it is not obvious to the skilled person. Also, the Explanatory Memorandum should clarify that the European ‘obvious to try’ test may be appropriate in some cases and that the court-made ‘scintilla of invention’ and ‘directly led as a matter of course’ tests are not suitable.
Innovation patents have been under attack in Australia for some time. To be eligible for protection, an invention does not need to involve an inventive step. The invention merely has to include novel features affecting how it works in a material way. Critics say this has lead to a plethora of low quality inventions receiving protection and patent system abuse.
Claiming technical features
The Government appears to have been persuaded by assertions made by the Productivity Commission that requiring patent applicants to identify an invention’s technical features in the claims is a requirement in Europe and will enable genuine technological advances to be better targeted for protection.
The proposed objects clause would describe the legislation’s purpose as enhancing the wellbeing of Australians by promoting technological innovation and the transfer and dissemination of technology. The impact of this is unlikely to be significant. However, it could help sway decisions of the Australian courts for more subtle questions of patent law.
Although it is unclear how the proposals will be implemented, Australian patent applicants should consider taking action now to take advantage of existing laws. For example, applicants should consider requesting examination of pending applications now so that they are examined under the existing, less stringent obviousness tests. Applicants may also wish to take advantage of innovation patents while they still exist.