ACIP Releases Issues Paper: Review of Patentable Subject Matter

Threshold test and its relevance to Manner of Manufacture: http://www.acip.gov.au/library/Patentable%20Subject%20Matter%20Issues%20Paper.pdf

The Advisory Council on Intellectual Property (ACIP) has recently released an Issues Paper regarding a review on the 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.

The Paper provides an insightful historical and international context for the debate on patentable subject matter and its outer limits. The table at page 23, tracing the relevant tests, is illustrative.

Of particular note was the Paper’s discussion on the threshold test and whether it remains applicable law in a post-Lockwood landscape. At page 27, the Paper states:

“From Lockwood v Doric it is not clear whether the threshold test articulated in Philips v Mirabella still stands. Some commentators have said that the decision has appropriately made it more difficult to revoke a patent on the grounds of non-inventiveness. The Philips v Mirabella decision meant there was effectively two tests for both novelty and inventiveness - one based only on the information in the specification and the other based on what is known from the prior art. Some argued that the threshold test was necessary because the tests based on the prior art are too narrow and difficult to sustain, and so do not eliminate all undeserving patents. The main argument against the test is that combining novelty and inventive step with the manner of manufacture test unnecessarily complicates understanding and administration of patent law. Also, it was in an applicant’s interest to disclose less about the prior art in their specification in order to reduce the likelihood of this information being used against them.

The Paper then states: “An important issue is therefore whether a threshold of inventiveness still exists and the appropriateness of this.”

The Paper also provides a series of questions to provoke further thought and debate on the current law. What is said at 57 is pertinent to the threshold test:

“E. Threshold of inventiveness
It is unclear whether the threshold of inventiveness established in Philips v Mirabella still stands – see Part 7.2.3. It is questionable whether such a threshold meets the objectives of the system. If it does, it may need to be reinstated through legislation. If it doesn’t, its removal may also need to be ensured through legislation. Some options for achieving this are:

• modifying the definition of invention so that it no longer refers to a manner of manufacture in any form, but merely means the subject of a patent application;
• removing the definition of invention;
• replacing the concept of manner of manufacture in the Act with a new concept that purely relates to inherently patentable subject matter.”

Submissions on the above issues, amongst others, are due on 19 September. Given the importance of the debate on the threshold issue and its obvious broader overlap with inventive step and evidentiary issues arising under that test, the ACIP Paper is a timely analysis. It quite possibly feeds into other reviews currently under domestic debate, as previously covered on IPROO:http://www.iproo.net/2008/06/ip-australia-improvement-to-australian.html