Government Requests Submissions on Intellectual Property Reforms

The Minister for Innovation, Industry, Science and Research, Senator the Hon. Kim Carr, has invited written submissions on proposed reforms to Australia’s intellectual property (IP) system.  The proposed reforms aim to reduce barriers to innovation for researchers and inventors, allow patent claims to be resolved faster and strengthen penalties for counterfeiting and other serious forms of trade mark infringement.

“A strong and efficient IP system is a cornerstone of successful innovation,” Senator Carr said. “I encourage all stakeholders to make submissions and let their views be known.”

IP Australia, the Australian Government agency responsible for administering patents, trade marks, designs and plant breeder’s rights, has released the first two of a series of discussion papers detailing the proposed reforms:

  1. Getting the Balance Right – Raising patentability standards and giving greater certainty in the validity of granted patents.
  2. Exemptions to Patent Infringement – Ensuring that patents do not inhibit research and development in Australia.

Getting the Balance Right

The first paper, Getting the Balance Right, considers patentability standards.  At present, Australia’s patentability standards are set at a lower level than standards in other countries including major trading partners.  Jurisdictions such as the United States, European Patent Convention (EPC), Japan and the UK share more in common in terms of standards than with Australia.

Australian standards for full description, fair basis and inventive step are set at levels that are lower than the levels set for equivalent criteria in other major jurisdictions such as the US, Japan and the European Patent Convention (EPC) and levels set by the Patent Cooperation Treaty (PCT).  As a consequence, broader patents can be granted in Australia than in countries which are our major technology trade partners.  The proposed reforms will raise the thresholds set for grant of a patent in Australia and better align Australia’s key patentability standards with other jurisdictions.

Currently there are inconsistencies between the grounds the Commissioner can consider during examination, re-examination, and opposition proceedings and the grounds that may lead to revocation in the Courts, and between the standards of proof against which patentability standards are assessed.  These inconsistencies contribute to uncertainty in the validity of granted patents. The proposed reforms to requirements and standards will improve the scope and stringency of examination to reduce inconsistencies and give greater certainty in the validity of granted patents.

Exemptions to Patent Infringement

The second paper, Exemptions to Patent Infringement, considers reforms to amend the Patents Act 1990.  In recent years, a growing appreciation of the importance of IP in the successful commercialisation of technology and the realisation that successful innovation is a primary driver of economic growth have seen an greater awareness and use of patent rights in Australia and overseas.

There are concerns that the growth in the number of patent applications and grant of patent rights may be stifling research and development, as researchers and businesses are uncertain as to where they have freedom to operate.

IP Australia proposes amendment of Part 1, Chapter 11 of the Patents Act 1990 to include a statutory exemption that covers research, experimentation aimed at determining freedom to operate and experimental activities to obtain the information required for regulatory approval of a patented invention. An experimental use exemption is a means of providing researchers and businesses with greater certainty about concerns around their freedom to operate.


The call for submissions provides an opportunity for interested parties to contribute to the Government’s work in this area.  IP Australia is seeking submissions based on the two reform papers released today and will release further papers over the coming months. IP Australia will consider all submissions and then make recommendations to the Government.

The closing date for submissions is Friday, 8 May 2009.  Further information is available here.


Minister Carr’s media release (30 March 2009)

IP Australia

Consultation Paper 1:Getting the Balance Right – Raising patentability standards and giving greater certainty in the validity of granted patents.

Consultation Paper 2:Exemptions to Patent Infringement – Ensuring that patents do not inhibit research and development in Australia.