Fabricating Invention: The Patent Malfunction of Australian Patent Law

Abstract

Despite advice to parliament that patents are granted only for 'a significant advance over what was known and what was available to the public' 2 the evidence shows this is not the standard used. The actual standard is a scintilla-a marginal difference from what is known. The consequence of such a low standard is that thousands of patents are granted for things that contribute no public benefit. Such trivial patents can impede genuinely inventive companies. *** 'The production of the knowledge of how to do in a somewhat different way what we have already learned to do in a satisfactory way would hardly be given highest priority in a rational allocation of resources.' (Machlup 1958: 51) *** The reform process In 2009 the Australian government-through IP Australia-began a process to reform the standard patent system. This covered a range of issues but the focus of this article is the reform of the 'inventiveness standard'. IP Australia commented that there were 'a number of areas in which Australia's requirements for inventive step are set at a lower level than those of other jurisdictions' (IP Australia 2009a: 9). 3 Particular concerns were 'allowable existing knowledge' and the 'test for inventiveness', as each can lead to the grant of patents for trivial inventions.

Exploring Evergreening: Insights from Two Medicines

“…It is often assumed that patents are only granted for genuine inventions. Evidence from the field of business method patents suggests a very much lower standard (Moir ). The data presented here confirm that patents are granted for inventions with a negligible quantum of inventiveness.…”

“…Both cases also illustrate a second type of evergreening patent that is also effective in delaying generic entry. The patent system regularly grants patents for combinations of known substances (Moir ), such as combining a known compound with a known release mechanism (for example, immediate, delayed or extended). With venlafaxine, such a combination patent acted to delay generic competition by 2.5 years.…”

Costs to Australian taxpayers of pharmaceutical monopolies and proposals to extend them in the Trans‐Pacific Partnership Agreement

“…Evergreening patents are secondary patents held by the owner of the original patent. Evergreening presents a particular problem in countries with low patentability standards, such as Australia and the US 8 , 9 …”

“…Evergreening presents a particular problem in countries with low patentability standards, such as Australia and the US. 8,9 US researchers examined patents granted for two HIV drugs (ritonavir and lopinavir/ritonavir) and found that Abbott owned 82 secondary patents and had a further 26 pending applications in the US, all of which involved small variations on the original patents for these drugs. 9 They found that these evergreening patents could delay generic competition for 19 years beyond the date from which generic entry would have been anticipated.…”

Trade Treaties and Patent Policy: Searching for a Balanced Approach

“…33 In Australia the right to amend a patent claim was introduced in 1953 and this policy change has never been evaluated. My study of the doctrines leading to the grant of patents for "inventions" which contribute no new knowledge indicates that many of these would never be granted if the right of amendment were limited (Moir 2013b). Where there is an error that might prejudice grant to an otherwise inventive application, a single right to amendment could be allowed in special circumstances.…”