BILSKI’S RELEVANCE TO AUSTRALIA – ACIP REVIEW (Part II)

In light of Bilski, it will be interesting to see whether it shapes the Australian debate with respect to manner of manufacture – particularly the overlapping nature of the grounds of invalidity regarding inventive step and inventiveness. This conundrum is notably stated on page 36 of ACIP Issues Paper titled, Patentable Subject Matter (2008):

“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 problem with the legislative history of Australian patent law is that is caught between the Patents Act 1952 and the Patents Act 1990 that incorporated definitions from the earlier act, whilst at the same time redefining the grounds of invalidity in s 18. For detailed discussion on the manner of manufacture test, do review the Issues Paper as it provides an excellent historical perspective of the relevant law. See:http://www.acip.gov.au/library/Patentable%20Subject%20Matter%20Issues%20Paper.pdf and a previous blog at http://www.iproo.net/2008/06/acip-review-of-patentable-subject.html

While legislative reform is touted with respect to the test for manner of manufacture, the problem outlined above (post-Doric), in the Issues Paper, will perhaps be best reconciled when the legislature addresses the nuances of prior art and common general knowledge. Such nuances, which I will address in future posts, simply do not exist in US law. This may be one reason why the Bilski decision was so clear in its reasoning as it was not hindered by tests examining ‘admissions on the face of the specification’, Gerber rebuttals and the issue of disclaimers. The following article written (albeit pre-Doric) may provide further insights: Admissions on the Face of the Specification - Practical Implications for Patent Drafting and Litigation, Intellectual Property Forum (March 2007).