Legal Comment by Mark Illidge

The hinterland is home to many inventive and innovative people. If you have experienced the patenting process in Australia, or are optimistic that you might in the future, you may wish to have some input into an upcoming review. What subject matter is patentable has become increasingly contentious in recent years. As a result The Minister for Innovation, Industry, Science and Research has appointed the Advisory Council on Intellectual Property (ACIP) to inquire, report and make recommendations to the Australian Government.

Currently Section 18 of the Patents Act 1990 (Cth) provides that in order for an invention to be patentable it must:

• be a manner of manufacture (the main test);
• be novel;
• involve an inventive step;
• be useful; and
• not have been secretly used in Australia by or with the authority of the patentee or the patentee's predecessor in title before the priority date.

These requirements have been described by the Australian Law Reform Commission as ambiguous and in need of review.

The following are not patentable:

• human beings, and biological processes for their generation;
• inventions contrary to law;
• food or medicine made up of known substances; and
• the name of a person.

The ACIP released an ‘issues paper’ last year. In particular the ACIP has requested submissions in relation to the role, if any, economics and ethics have in influencing what should and should not be patentable subject matter. ACIP have indicated that there will be a further publication in early 2009 which will give some indication as to their view on these issues. The ACIP will seek further public input this year. More information regarding the review can be obtained from ACIP’s website:

www.acip.gov.au

To find out more about the authors you can read About Us

For more information or to make an appointment please Contact Us