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Major changes to Australian patent laws back on the table

As previously blogged, in August last year the Australian Government released a set of proposed changes to the Patents Act 1990 (Cth) in response to an inquiry carried out by its advisory body, the Productivity Commission.

Since then, the course of the proposals, and the Government’s plans, has taken various twists and turns. It now, however, looks like things are getting serious. On 23 July 2018, IP Australia released for public comment a draft Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2018.

The draft Bill proposes to:

1. Phase out innovation patents

After the laws come into effect, no new innovation patents will be able to pass the formalities check undertaken by the Patent Office when innovation patent applications are filed. Effectively, no new innovation patents will be able to proceed to grant.

2. Add an objects clause into the Act. The proposed clause reads:

“The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.”

While arguably not a significant change, the clause may nevertheless be taken into account by the Australian courts (and perhaps also the Patent Office) when tasked with deciding subtle questions of patent law.

3. Amend inventive step requirements

The Bill proposes to add the following provision into the Act:

“For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base if the invention is not obvious to a person skilled in the relevant art.”

This would align the Act with the equivalent wording found in Article 56 of the European Patent Convention.

4. Amend Crown use rights

Crown use refers to the Australian Government's right to compel a patentee to license its patented technology to a government body. The Bill proposes to provide that:

  1. Crown use may be invoked for any service provided or funded by any Commonwealth, State or Territory government body;

  2. Except in exceptional circumstances, the relevant government body must notify the patentee and endeavour to negotiate an agreement with them before invoking Crown use; and

  3. Crown use may only be invoked with Ministerial authorisation.

5. Amend compulsory licensing rights

Compulsory licensing is similar to Crown use but applies to non-government entities. In certain circumstances, a third party may compel a patentee to license its patented technology to them. The Bill proposes to:

  1. Introduce a public interest test that must be taken into account by a court when determining whether or not a compulsory licence is to be granted. This would replace the ‘reasonable requirements of the public’ test currently in the Act;

  2. Also require the public interest to be taken into account when determining the terms of a compulsory licence; and

  3. Improve various legislative provisions relating to compulsory licensing of dependant patents.

Interested parties have until 31 August 2018 to make written submissions in response to the Bill and can do so here.


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