Proposed Changes to the Patents Act 1990 (Cth)
The recent Productivity Commission into Intellectual Property Law resulted in significant changes to trademarks law via the enactment of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018. Further changes are proposed to patents law in Part 2 of the Response and are likely to be introduced by the end of the year.
There are several proposed changes to the Patents Act 1990 (Cth), 4 of which are discussed below. If you need advice about how to protect your intellectual property in light of these changes, LawPath can connect you with an experienced patents attorney.
Addition of objects clause
The Patents Act currently does not have an objects clause. Objects clauses are useful provisions which help decision-makers who are interpreting the Act gain an understanding about the wider aims of the legislation. Often decision-makers will refer to the objects clause when attempting to resolve ambiguity in one of the sections of the Act.
Including an objects clause in the Patents Act will give greater clarity about the aims of the legislation. How does this impact you? Whilst it will not directly impact your rights, it will result in more consistent decision-making regarding the granting of patents.
Amending the ‘inventive step’ provision
A precondition to getting a standard patent approved is proving that the invention satisfies the ‘inventive step’. The ‘inventive step’ is satisfied if you can prove that the invention is not an obvious thing for someone with experience in and knowledge of the field to make.
The proposed changes would alter the structure of the inventive step provision (section 7). This change is meant to declutter the provision and make the assessment easier to apply.
Phasing out of innovation patents
There are two types of patents under the Patents Act. First, there is the standard patent which gives protection for 20 years. To apply for this patent, you must be able to prove that:
- the invention is new;
- involves an ‘inventive step’; and
- is able to be used in an industry.
The other patent type is the innovation patent. Traditionally, innovation patents were sought for inventions with short market lives. Protection lasts up to 8 years and requires the applicant to prove the threshold of ‘innovative’ step. This means that the applicant must prove that the invention is new and will improve existing technology. They are most common in fast moving industries where inventions are likely to be superseded shortly after going to market.
The proposed changes to the Patents Act would see the innovation patent phased out. The key reason behind this phasing out is the concern that it has caused a rise in low quality patents and stifles innovation. Applications made after the proposed legislation is passed will not be granted.
What does this mean for you? If you are seeking patent protection after the legislation comes into force, you will only be able to apply for the standard patent. This application process has a higher threshold and can be more difficult to get protection.
The application process for patents can be difficult to navigate and understand. LawPath can connect you with an experienced patents attorney who can assist you with the application and give you the best chance of getting protection for your invention.
Compulsory licensing provisions
A compulsory licensing provision enables a court order to be made for a patent holder to grant a license to another party. The third party will have non-exclusive rights to use the patented invention. There are limited circumstances in which a compulsory license will be granted:
- the applicant must have made unsuccessful attempts over a reasonable period of time to gain authorisation to use the patent under reasonable conditions;
- the ‘reasonable requirements of the public’ are not made for the patented invention; and
- The patent holder has no satisfactory reason for not exploiting the patent.
At date of publication, a compulsory license is just to be granted in Australia.
The proposed changes are as follows:
- Replacement of the ‘reasonable requirements of the public’ test with a ‘public interest’ test; and
- Require the court to consider the public interest in determining the terms of the license.
The transition to a public interest test will allow courts to consider broader industry factors in making their assessment.
Conclusion
Patents law is a dynamic area and it is important to stay on top of changes in law to ensure your IP is properly protected. If you have any concerns about how best to protect your IP, LawPath has patents attorney who can help you understand the process.
Need more help? Contact a LawPath consultant on 1800 529 728 to learn more about customising legal documents, obtaining a fixed-fee quote from Australia’s largest legal marketplace or to get answers to your legal questions.
