Options to Improve the Application of the Patents Act
Reviewing IPONZ Guidelines
57. The Nuffield Council discussion paper argues that patent offices must, in the public interest, take a more critical role in examining applications for genetic patents, it being the very purpose of the examination system to filter out unjustified claims to rights before they become available against industry and academia. The Nuffield Council also stated that clear guidelines must be spelled out and that direction be provided regarding the interpretation of the criteria of "novelty, non-obviousness and utility", as they pertain to the issuing of gene patents.
Comment
58. Further development of the IPONZ guidelines, procedures and training manuals with regard to patent applications involving genetic material should be encouraged, with input from other Government agencies.
59. This issue has also been considered by the ALRC, which made the following proposals for changes to IP Australia's practices (IP Australia is the Australian equivalent of IPONZ):
- To ensure the on-going competence of Australian patent examiners in assessing patent applications, IP Australia should continue its efforts to provide examiners with continuing education in areas of technology relevant to their particular specialty. IP Australia should review and update its education programs regularly so that new developments can be incorporated as required (Proposal 8 - 1).
- The Commonwealth should amend the Patents Act 1990 (Cth) (Patents Act) to authorise IP Australia to establish panels of experts to advise patent examiners in assessing patent applications, as circumstances require Proposal (8 - 2).
- IP Australia should ensure that appointments to the panel of experts reflect a balance of independent scientific and legal expertise, and that they be made only after consultation with relevant industry organisations and other stakeholders. IP Australia should also develop procedures for the operation of the panel, including procedures in relation to confidentiality, conflict of interest, and decision-making by the panel. (Proposal 8 - 3).
- IP Australia should develop examination guidelines, consistent with the Patents Act, the Patents Regulations 1991 (Cth) and existing case law, to explain how the criteria for patentability apply to inventions involving genetic materials and technologies (Proposal 8 - 4).
- The Commonwealth should amend the Patents Act to require patent examiners to be satisfied on the balance of probabilities when assessing all statutory requirements for patentability that are relevant at the stage of examination. (See also Proposal 6 - 3.) (Proposal 8 - 5)
60. Consideration should be given to whether IPONZ could make similar changes to its practices. The proposals regarding panels of experts though, (recommendations 8.2 and 8.3) may be impractical in the New Zealand context, as it may be difficult to find suitable experts who did not also have an interest in patent applications.
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