The 101 page report [PDF] by ACIP reflects concerns over several years about the sorts of things that can be patented. Under the Patents Act 1990 (Cth) the primary test in Australia of whether an invention is patentable subject matter is whether it is a 'manner of manufacture'. That test has been criticised as ambiguous and obscure, with the Australian Law Reform Commission's 2004 Genes and Ingenuity report on gene patenting for example noting the value of a flexible test for patentable subject matterbut finding that the test for the usefulness of an invention was unclear and accordingly recommending that the manner of manufacture test be reviewed.
The ACIP review recognised the overlap between 'manner of manufacture' and other criteria for patentability, thus encompassing 'patentable subject matter'. It included examination of the appropriateness and adequacy of the 'manner of manufacture' test as the threshold requirement for patentable subject matter under Australian law, and the historical requirement that an invention must not be 'generally inconvenient'.
ACIP released an Issues Paper in July 2008 as part of public consultation (with 38 public submissions from interest groups and academics such as Matthew Rimmer and Luigi Palombi) and conducted several public fora in March 2009 to discuss key issues. Its September 2009 options paper identified possible options for reforming the law, eliciting several written submissions in response to the options paper and resulting in a final report on the review of patentable subject matter. That report was provided to the Minister for Innovation, Industry, Science & Research in December last year.
The report's recommendations are cautious. They include -
• codifying the established principles of patentability – so that an invention must be an artificially created state of affairs in the field of economic endeavourThe ACIP Chair in submitting the report states that -
• maintaining the current exclusion from patentability of human beings and biological processes for their generation – but not introducing any further specific exclusions,
• introducing a general exclusion from patentability of inventions whose commercial exploitation would be wholly offensive to the Australian public,
• including a statement of objectives in the Patents Act to outline its purpose,
• changes to assist the Commissioner of Patents when applying the test for patentability.
In its wide consultations ACIP has listened to the concerns of the business community, interest groups and other stakeholders, and has sought a balanced approach to take account of their diverse views and interests.The Government will now develop a response to the report. That response may take some time, given current consideration of gene patenting by Parliamentary committees.
A key recommendation is to introduce a general patentability exclusion in respect of subject matter the commercial exploitation of which would be wholly offensive. The proposed exclusion would provide a mechanism for dealing with contentious subject matter in extreme cases and remove the current uncertainty in relation to the doctrine of general inconvenience.
