Review of patentable subject matter in Australia

The Advisory Committee on Intellectual Property (ACIP) released an issues paper¹ in July on patentable subject matter in Australia, inviting submissions by 19 September 2008.

The questions asked by the ACIP in the issues paper confirm and make clear that the question ‘What should be patentable?’ is a highly charged political issue. The considerations informing this debate may be loosely categorised into macro considerations and micro considerations.

Relevant macro considerations include economic objectives, the extent to which ethical considerations should determine what is patentable and international relations. While sometimes aligning, these considerations often conflict.

Relevant micro considerations include whether methods of diagnosis or treatment of animals, particular genetic sequences, or ‘business methods’ should be patentable. Each of these have their own specific issues and have been subject to specific exclusions in various countries.

In the past, there has been significant support for the existing test of asking whether the invention is a ‘manner of manufacture’. Proponents of this test point, in particular, are to its adaptability to developing technologies. This flexibility is to a large extent, attributable to the now famous NRDC² decision of the Australian High Court.

It is interesting that the ACIP is open to ideas that do not necessarily comply with Australia’s international obligations. It is unlikely that the Federal Government would choose to unilaterally breach its obligations under TRIPS or the AUSFTA. However, within the confines of these two treaties there is wide scope for adjusting the range of inventions that are deemed patentable in Australia and debate this important developmental area of law is to be applauded.

This article was written by Carl Harrap, Senior Associate, Sydney.

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