Following the 2004 Australian Law Reform Commission (ALRC)
report on gene patenting and human health in which it was reported
that the key concept of patentable subject matter in Australia was
ambiguous and obscure, the Minister for Innovation, Industry,
Science and Research asked the Advisory Council on Intellectual
Property (ACIP) to conduct a review into the appropriateness and
adequacy of the manner of manufacture test. The terms of reference
for the review asked the ACIP to inquire, report and make
recommendations to the Australian Government on patentable subject
The ACIP Report was released on 16 February 2011 and included a
number of key recommendations including:
(a) codification of the established principles
of patentability by amendment of the Patents Act 1990 to
include a statement of the law currently applied by the Courts -
namely, that a patentable invention must be an "artificially
created state of affairs" in the field of economic
(b) maintenance of the current exclusion from patentability of
human beings and biological processes for their generation;
(c) amendment of the Patents Act 1990 to include a
general exclusion from patentability of inventions whose commercial
exploitation would be wholly offensive to the Australian public;
(d) inclusion in the Patents Act 1990 of a statement of
objectives outlining the purpose of the Act so that any test for
patentable subject matter must support the objectives of the patent
The release of the ACIP Report follows the recent publication of
the Report of the Senate Community Affairs Committee Inquiry into
the impact of patenting of human genes and biological materials.
Significantly, neither Report makes any recommendation to
specifically exclude genes and/or biological materials from
patentability. Indeed, it is noteworthy that the ACIP Report
specifically states: "we do not recommend the introduction
[into the legislation] of a specific exclusion to prevent the
patenting of human genes and genetic products".
This position is at odds with the Private Member's Bill
introduced into the Australian Senate at the end of last year in
support of a broad-reaching amendment to the Patents Act
1990 to prohibit patenting of genes and biological materials.
Currently, the Bill is before the Legal and Constitutional Affairs
Legislation Committee for consideration. The deadline for making
submissions to the Committee is 25 February 2011. The Committee is
due to report on 16 June 2011.
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