Current Reviews

ACIP's current work program covers a number of reviews, including:

Review of Patentable Subject Matter
Review of post-grant Patent Enforcement Strategies
Review of enforcement of Plant Breeder's Rights (PBR)

For information on completed reviews, follow this link

Review of Patentable Subject Matter

In recent years a variety of concerns have been raised about the sorts of things that can be patented. In Australia the main legal test of whether an invention is patentable subject matter is whether it is a ‘manner of manufacture’. In its broad ranging 2004 review of gene patenting and human health Report 99 Genes and ingenuity, the Australian Law Reform Commission (ALRC) recognised the value of a flexible test for patentable subject matter, but found that the manner of manufacture test was ambiguous and obscure. In particular, the meaning of the criterion that an invention not be ‘generally inconvenient’ and the test for the usefulness of an invention were not clear. The ALRC recommended that the manner of manufacture test be reviewed.

Due to the high degree of overlap between 'manner of manufacture' and other criteria for patentability, in order to be effective the scope of the review will encompass 'patentable subject matter'. Consequently, the Minister for Innovation, Industry, Science and Research has requested that the Advisory Council on Intellectual Property (ACIP) conduct a review of patentable subject matter, including 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 has released an Issues Paper and invites any interested parties to make a written submission. In particular, ACIP seeks responses to Questions 1 to 12 contained in Part 11 of the paper. However, the purpose of the paper is to provoke discussion and any other relevant comments are very welcome. Hard copies of the issues paper are available and may be obtained by contacting the ACIP Secretariat. Written submissions should be sent to:

Brendan Bourke
Secretariat
Advisory Council on Intellectual Property
PO Box 200
WODEN ACT 2606

Email: Brendan.Bourke@ipaustralia.gov.au
Telephone: 02 6283 2148
Fax: 02 6281 1239

Written submissions should be made by 19 September 2008. Submissions in electronic format are preferred. ACIP may also hold round table or one-on-one discussions with interested parties later in 2008. ACIP would appreciate those making submissions to indicate whether they would be interested in participating in any such discussions. Please note that, unless requested otherwise, written comments submitted to ACIP will be made publicly available.

Review of post-grant Patent Enforcement Strategies

In recent years there has been increasing concerns expressed regarding the difficulties involved in enforcing patent rights, particularly by individuals and small to medium enterprises (SMEs). Difficulties with patent enforcement could lead to sub-optimal innovation growth which may also affect the Australian economy. In response the then Federal Industry Parliamentary Secretary, requested that ACIP inquire into and report on issues relating to post-grant patent enforcement strategies to benefit the Australian economy by assisting patentees to effectively enforce their patent rights. This review will focus on strategies that may assist individuals and (SME’s) enforce their patents in a cost effective way.

ACIP has released an issues paper in November 2006 to seek the views of interested parties. The Council received a number of written submissions and consultations were held with interested parties in Canberra, Sydney and Melbourne in October 2007. ACIP is currently developing an discussion paper which it expects to release late 2008. After consideration of the submissions and possible consultations regarding the discussion paper, ACIP expects to submit a final Report with recommendations to the Government in early 2009. Hard copies of the issues paper are available and may be obtained by contacting the ACIP Secretariat: jacqueline.carroll@ipaustralia.gov.au

Review of enforcement of Plant Breeder's Rights (PBR)

In response to concerns raised about the enforcement of plant breeder's rights, the Government requested that ACIP inquire into and report on issues relating to the enforcement of plant breeder's rights in Australia and to consider possible strategies to assist Australian plant breeder's rights holders effectively enforce valid rights. The Review includes a consideration of whether there may be benefits from extending the jurisdiction of the Federal Magistrates Court to include PBR matters.

ACIP released an issues paper in March 2007 to seek the views of interested parties. The Council received a number of written submissions and consultations were held with interested parties in Canberra, Sydney, Melbourne, Brisbane and Perth in June and July 2007. ACIP has released an Options Paper which identifies those options with the most potential to assist the enforcement of PBR. ACIP welcomes comments from interested parties on the options canvassed and questions posed. Responses to the Options Paper should be sent to:

Sean Applegate
Secretariat
Advisory Council on Intellectual Property
PO Box 200
WODEN ACT 2606
Email: sean.applegate@ipaustralia.gov.au
Telephone: 02 6283 2207

Comments should be received no later than 18 July 2008. Electronic submissions are preferred. Also please note that, unless requested otherwise, written comments submitted to ACIP will be made publicly available.

After consideration of the submissions and possible further consultations, ACIP expects to submit a final Report with recommendations to the Government in late 2008.