Inventions ‘wholly offensive to the Australian public’

The Proposal By Robert Munro

The Australian Government recently proposed amendments to the Patents Act[1] to introduce the following:

• An object clause setting out the underlying purpose(s) of the Act;[2] and

• A patentability exclusion to prevent the commercialisation of inventions that would be wholly offensive to the Australian public.[3]

Objectives of the Proposal

The proposed amendments are in response to a number of reports on gene patents and patentable subject matter. The objectives of the proposed amendments include:

• Assisting the courts and patent examiners with the interpretation and application of the Patents Act 1990;[4] and

• Introducing an explicit exclusion from patentability for inventions where society would have a moral objection to commercialisation of the invention.[5]

 Potential Impact

a) Object Clause

Under Australian law, including an express statement of objectives within an Act has considerably greater force in guiding a court in interpreting an Act compared to extrinsic information.[6]

At this stage, the Government has accepted the following object clause in its response to the Gene Patents Report:[7]

 …the purpose of the legislation [is] to provide an environment that promotes Australia’s national interest and enhances the well-being of Australians by balancing the competing interest of patent rights holders, the users of technology, and Australian society as a whole.

Commentators have suggested that it is unclear how this object clause will help in interpreting the Act. In particular, there will be difficulties in defining what is in ‘Australia’s national interests’ when our patent system should reflect us participating in an international regime where reciprocal rights between countries are primarily of benefit.[8]

b) Explicit Exclusions

A general exclusion on ethical grounds may serve an important function in reassuring the wider public that the patent laws are not an amoral mechanism placing monopoly powers in commercial hands.

On the other hand, if this test was applied inconsistently by a Court or the Australian Patent Office, this proposed amendment may have the opposite effect. It will also be appreciated that Examiners may have difficulty in making decisions on what is, or is not, offensive to the Australian public.

Accordingly, further guidance will be needed in considering what is ‘wholly offensive’ to the ‘ordinary reasonable and fully informed member of the Australian public’. It has been proposed that the Commissioner of Patents be empowered to seek advice on this issue, when required.

A consultation paper has been released seeking views on the proposed amendments and written submissions are due by 27 September 2013 to IP Australia.

Submissions should be sent, preferably in Word or RTF format, to consultation@ipaustralia.gov.au.

If you wish to discuss these proposed amendments further with us, please do not hesitate to contact us.

By Robert Munro – rmunro@fak.com.au

 

Endnotes:

[1] Patents Act 1990 (Cth).

[2] Commonwealth, Australian Government Response to the Senate Committee Gene Patents Report (2011) 13.

[3] Ibid.

[4] Ibid.

[5] Ibid.

[6] Acts Interpretation Act 1901 (Cth) s 15AA, 15AB.

[7] See above n 1.

[8] Mark Summerfield, ‘Offended’ by Patents? Make Your Feelings Known! (2013) Patentology < http://blog.patentology.com.au/2013/07/offended-by-patents-make-your-feelings.html#more> at 1 August 2013.