Australians ask: what should we patent?

Though it never worked as a safety
hat for people learning to swim, this
great Australian invention soon
found an unexpected secondary use

The IPKat thanks his Antipodean friend Anna Feros for this link to today's media release from the Australian Government's Advisory Committee on Intellectual Property (ACIP), concerning ACIP's its report on patentable subject matter and its recommendations to amend the Patents Act 1990.  According to the media release, which is headed "What Should be Patented?",

Patent law should be amended to clarify what should and should not be patentable [What! Says Merpel -- won't that take all the fun out of Australian patent law?], an Advisory Council on Intellectual Property (ACIP) report has found. The report on patentable subject matter was released today [nb: it's dated December 2010] by the Chair of ACIP, Mr Leon Allen. 

“There has been recent debate in Australia on the patenting of genes, computer software and business methods”, Mr Allen said today. “Concern has been expressed that mere discoveries or abstract ideas are being patented, and that these patents are hampering access to important innovations and restricting the development of new products [Curiously enough, we Europeans have the same debate and concerns, despite the clarity of expression of the European Patent Convention's lists of (un)patentable subject matter which we've been working from since 1978]. Others say that unethical or offensive inventions can be patented.  ACIP’s recommendations provide a framework to deal with these concerns”.

In conducting the review ACIP received a number of submissions from stakeholders and consulted with them at public discussions in most major capital cities. Key recommendations of the report include: 

• codifying the established principles of patentability – so that an invention must be an artificially created state of affairs in the field of economic endeavour [this looks in principle like an imaginative way of combining the 'products found in nature' issue with 'industrial applicability'] 

• maintaining the current exclusion from patentability of human beings and biological processes for their generation – but not introducing any further specific exclusions [not because the current situation is perfect but because there's no convincing evidence that a shift in either direction would bring better results?]

• introducing a general exclusion from patentability of inventions whose commercial exploitation would be wholly offensive to the Australian public. 

The report also recommends including a statement of objectives in the Patents Act 1990 to outline its purpose, and changes to assist the Commissioner of Patents when applying the test for patentability. 

“ACIP has listened to the concerns of the community, business and other stakeholders, and has sought a balanced approach to take account of their diverse views and interests”, Mr Allen said".

You can read the whole report here.  In an amazing feat of symmetry, it's 95 pages long and has 95 footnotes.  The IPKat was interested in the reasoning behind the introduction of a statement of objectives.  The report says at p.3:

"If there is no statement of objectives within the patents legislation, its purpose must be uncovered through secondary sources such as reports to Government, second reading speeches and explanatory memoranda. A statement of objectives is preferable because it conveys the reasons behind Australia’s patent system more transparently. 

A statement of objectives would clarify the interaction between the patent system and competition policy. Including a statement of objectives in the Australian patents legislation would also bring it into line with the practice in other Australian legislation in which objectives clauses, either for a whole Act or a part of an Act, are used. Objectives clauses are also included in the patents legislation of other nations, including Japan, Korea, China, and in the New Zealand Patents Bill".

The Kat wonders how the statement of objectives would compare with the recitals that front Europe's Directives and Regulations, which sometimes seem tiresomely contradictory unless they are taken collectively as a general instruction to the court which interprets them to find the right balance on all occasions when called upon to do so. He also notes ACIP's endorsement of the manner in which the Australian courts have, without formal guidance but on the basis of their flexibility, steered a fairly satisfactory path to date between those things which are generally felt to be patentable and those which are not.

Great Australian inventions here