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

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 released an Issues Paper in July 2008 to seek the views of interested parties. A number of written submissions were received. . ACIP also conducted a number of public forums in March 2009 to discuss the key issues.

In September 2009, ACIP released an options paper (see the press release) setting out a number of possible options for reforming the law. ACIP has received a number of written submissions in response to the options paper. ACIP expects to provide a final report to the Australian Government in April 2010.

For further information about the review, contact:

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

Email: mail.acip@ipaustralia.gov.au
Telephone: 02 6283 2148
Fax: 02 6281 1239

Review of post-grant Patent Enforcement Strategies

Over recent years there have been repeated calls from patent owners in Australia, particularly individuals and small to medium enterprises (SMEs), concerning the difficulties associated with enforcing their patent rights after they have been granted. . In response the then Federal Industry Parliamentary Secretary, requested that ACIP:

Inquire 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.

ACIP 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.

On 21 August 2009, ACIP released an interim report (see the press release) reflecting ACIP’s current views and outlining a number of proposals to address the enforcement concerns of patent rights holders. A number of written submissions to this paper have been received. After consideration of the submissions, ACIP expects to submit a final Report with recommendations to the Government in late 2009.

After consideration of the submissions, ACIP expects to submit a final Report with recommendations to the Government in late 2009.

For further information about the review, contact:

Jacqueline Carroll
Secretariat
Advisory Council on Intellectual Property
PO Box 200
WODEN ACT 2606

Email: jacqueline.carroll@ipaustralia.gov.au
Telephone: 02 6283 2152
Fax: 02 6281 1239