Changes to inventive step requirements postponed

By Linda Govenlock PhD
Intellectual Property Patents & Trade Marks

In brief

In response to a range of concerns from stakeholders, the Federal Government has decided to postpone controversial amendments to the inventive step requirements. Partner Linda Govenlock and Senior Associate Lauren John report on this significant development.


IP Australia has released its response to the public consultation on the exposure draft of the legislation that will implement the second part of the Federal Government's response to the Productivity Commission's final report on its inquiry into Australia's IP arrangements. We previously outlined the key changes, and how they affect you, in our Proposed changes to the Australian Patents Act.

Surprisingly, IP Australia has announced that the Government has decided to postpone the controversial changes to the inventive step requirements, after stakeholders (rather unsurprisingly) expressed a range of concerns with the drafting of the provisions.

Why the postponement?

Chief among stakeholders' concerns – being the same ones that have been raised ever since the PC recommended changing the test for inventive step just over two years ago – were that insufficient time has elapsed since the Raising the Bar reforms were introduced for further changes to be made, and that the proposed drafting will not achieve the intended outcome of raising the threshold for inventive step.

Although some stakeholders expressed concern that aligning Australia's inventive step requirements with those in Europe should not be at the expense of moving Australian law further away from the US, IP Australia has said that it will look at ways to incorporate the European test for inventive step into the wording of the Patents Act 1990 (Cth). IP Australia will also undertake further consultation with stakeholders, although when, and how, this will happen is not yet clear.

Progression of other changes

The other changes included in the draft Bill will progress relatively unchanged.

  • The introduction of an objects clause: The proposed objects clause provides that the object of the Patents Act is, among other things, to provide a patent system in Australia that 'promotes economic wellbeing through technological innovation'. Although the submissions that IP Australia received expressed a 'range of views' about the drafting, it says the proposed drafting 'strikes an appropriate balance between the PC's recommendations and the feedback from stakeholders'.
  • The abolition of the innovation patent system: The last-ditch efforts of the Institute of Patent and Trade Mark Attorneys, and concerned users of the system, to save the innovation patent system have been unsuccessful, with IP Australia saying that it will proceed with the amendments to phase out the innovation patent system, as proposed in the draft Bill.
  • Amending the Crown use provisions: The proposed amendments will proceed, with minor technical changes to the drafting to clarify that the new Crown use provisions are subject to the terms relating to determining the remuneration payable to the patentee.
  • Amending the compulsory licensing provisions: The proposed changes to the compulsory licensing provisions will proceed, with several technical changes to the drafting to clarify the operation of the provisions and to remove inconsistencies in the current drafting.

What's next?

IP Australia has not indicated when a revised Bill will be tabled in Parliament. We will keep you informed of developments in relation to the legislation and deadlines for any actions. In the meantime, please contact us if you have any questions.