Skip to content

Reforming inventive step in Australia

As previously blogged, in August last year the Australian Government released a response to an inquiry carried out by its advisory body (the Productivity Commission) into Australia’s IP system. Significant changes to patent law were proposed in the response. This included raising the threshold required for inventive step so that it reflects that of the European Patent Office.

The Government has published a set of consultation papers (available here) which explore possible ways of implementing the changes. In relation to inventive step, four options are considered:

  1. Amend the Australian Patent Act 1990 (Cth) so that it directly reflects Article 56 of the European Patent Convention. The Act would be amended to state that an invention only involves an inventive step if, having regard to the prior art base, it is not obvious to a person skilled in the relevant art.

  2. Implement option 1, but also amend the definition of 'prior art base' in the Act to provide clarity and assistance with interpretation. This option would give the Australian Patent Office and courts some flexibility to apply tests other than the problem-solution approach that is taken by the EPO.

  3. Implement option 2, but also amend the Act so that the Commissioner of Patents (NB. not the courts) would be required to determine if an invention provides a solution to a technical problem. This maintains the flexibility afforded to the courts in option 2 but seeks to compel the Commissioner to follow the EPO’s approach during prosecution. The intent here is to give patent applicants certainty and predictability of examination outcomes.

  4. Define inventive step prescriptively in the legislation to match the EPO’s problem-and-solution approach.

The Government also proposes amending the Explanatory Memorandum of the Act to clarify that the European ‘obvious to try’ test may, in some cases, be appropriate to apply and that the ‘scintilla of invention’ and ‘directly led as a matter of course’ tests adopted by the Australian courts should no longer be followed.

Interested parties are invited to make written submissions in response to the papers by Friday 17 November 2017.

Innovation patents walking the green mile

The Australian Government has released draft legislation for public comment which includes measures to abolish Australia’s innovation patent system.

In August last year, the Government released a response to an inquiry conducted by its advisory body, the Productivity Commission, which proposed significant changes to Australian patent law. These changes included the phasing out of innovation patents.

Innovation patents have long been controversial in Australia. To obtain an innovation patent, an invention must be useful and new. However, unlike standard patents, the invention does not need to involve an inventive step. Instead, the differences between what has been created and what has been done before merely need to affect the way the invention works in a material way.

The draft legislation (which can be read here) includes transitional arrangements to maintain existing rights.