Submission to the Advisory Council on Intellectual Property Inquiry Into The Innovation Patent - Exclusion Of Plant And Animal Subject Matter

The Australian Centre for Intellectual Property in Agriculture (ACIPA) is a research centre based at the law schools of the Australian National University in Canberra and Griffith University in Brisbane. It commenced operations in September 2000 to undertake research in issues relating to intellectual property law, and apply that knowledge to the scientific community and industry and rural bodies. The Centre's ultimate purpose is to foster an active environment in which Australia better protects and capitalises the products of research and innovation. It has particular expertise in both patent law and plant breeder's rights. ACIPA is keen to consider the operation of s 18 (3) and 18 (4) of the Patents Act 1990 (Cth), as amended by the Patents Amendment (Innovation Patents) Act 2000 (Cth), which stipulates that certain inventions are outside the scope of the innovation patent. S 18 (3) provides that "for the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions." However, s 18 (4) notes that "subsection (3) does not apply if the invention is a microbiological process or a product of such a process". ACIPA submits that there are strong justifications for the exclusion of plant and animal subject matter from the scope of the innovation patent. There is currently no gap in intellectual property protection for inventions involving plant subject matter, because of the operation of the plant breeder's rights system. Animal subject matter is controversial and better left out of the scope of the innovation patent. The innovation patent would have harmful effects upon rural and regional communities if it were to include plant and animal subject matter. It also has the potential to harm research and development in Australia in relation to plants and animals. There is a need for a comprehensive review of the operation of the innovation patent, as well as the plant breeder's scheme, before any legislative amendments are implemented. ACIPA would like to make the following specific submissions: 1. There are still reservations about the constitutional validity of innovation patents - whereas there are no such doubts about the plant breeder's rights system. 2. The registration system for innovation patents is inferior to that demanded under the plant breeder's rights system because there is no requirement for substantive examination before the grant of rights. 3. The standard of an "innovative step" is vague and uncertain - in comparison to the requirements of distinctiveness, uniformity, and stability under plant breeder's rights. 4. The innovation patent regime fails to provide safeguards for the public interest in access to plants - unlike the plant breeder's rights system, which has a range of exceptions dealing with farmer-saved seed, among other things. 5. Patent protection of animal subject matter is controversial. 6. The innovation patent need not include plant and animal subject matter because of any international obligations