ACIP recommends amending the statutory test for patentability to match that which has been developed by the courts

The Australian Council of Intellectual Property (ACIP) has completed its review of the appropriateness and adequacy of the test of “manner of manufacture” as a threshold requirement for patentability.  Submissions were sought in 2008, public forums were conducted in 2009, and a Report was provided to the Minister in December 2010.  Yesterday, a report was released recommending a statutory test that is consistent with the test which is currently applied by the Courts. 

The current test of whether an invention contains patentable subject matter is found in s18 of the Patents Act, which provides that “an invention is a patentable invention if the invention … is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies” (of course the invention must also be useful, be novel and involve an inventive step).  The Courts have grappled with the meaning of “manner of manufacture” over the years, however the reference to the Statute of Monopolies, which requires that a patent not be contrary to law, mischievous to the state or generally inconvenient, has survived as a criteria for assessing patentability since the 1903 Act.

The Report acknowledges these difficulties and has recommended adoption of the best test developed by the Courts, particularly by the High Court in NRDC v Commissioner of Patents (1959), which found that an invention must be an artificially created state of affairs in the field of economic endeavour.  This test is said to have proved flexible enough to adapt to the advent of new technologies over the past century.

The Report also recommends:

  • the addition of a statement of objectives outlining the purpose of the Patents Act which the application of the test for patentable subject matter must support;
  • retaining the current exclusion of patenting human beings and biological processes for their generation, but not introducing any more specific exclusions; and
  • abandoning the requirement that a patentable invention must not be “generally inconvenient” in favour of a broad exclusion on the patentability of inventions the commercial exploitation of which would be offensive to ordinary Australians.

A copy of the report can be found here.  The next step is for the Government to respond to the recommendations.  

 

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