On 23 November 2011, the Federal Government tabled its combined
response addressing the recommendations of the Senate Gene Patents
Report (November 2010) and a number of previous reports into gene
patenting and patentable subject matter in Australia. In their
response, the Government endorsed a number of recommendations which
aim at increasing the quality of granted patents in Australia.
Significantly, the Government also supported recommendations not to
exclude the patenting of genes and biological material.
In November 2010, the Community Affairs References Committee
Gene Patents Report was tabled. This Report made a number of
recommendations in relation to improving patent quality and the
operation of the patent system. Most significantly, the Report made
no recommendation that the Patents Act 1990 be amended to
expressly prohibit the patenting of genes/biological materials. A
copy of this report can be viewed at:
Recommendation 4 of the Report proposed that the government
provide a combined response addressing the Senate Community Affairs
References Committee Gene Patents Report as well as a number of
previous reports into gene patenting and patentable subject matter,
The 2004 Report on Genes and Ingenuity: Gene Patenting and
Human Health by the Australian Law Reform Commission;
The review of patentable subject matter by the Australian
Council on Intellectual property (ACIP); and
The review of Australia's Patent System by IP
Specifically in their response, the Government accepted a number
of recommendations which aim at increasing the quality of patents
in line with major jurisdictions, Europe and the United States.
These accepted recommendations include:
Broadening the prior art base for inventive step as well
increasing the inventive step threshold;
Increasing support and utility requirements; and
Introducing a broad research exemption.
Most significantly, the Government appears to have acknowledged
community concerns about the patenting of genes and biological
material. However, rather than supporting a ban on these types of
patents, the Government has taken a technology neutral approach to
patent reform and supported clarification of existing safeguards in
the legislation such as Crown use and compulsory licensing
The Minister for Innovation Senator Kim Carr said, "the
response is designed to give confidence to the significant
investments in biotechnology innovation and research and
development. It will also ensure that patients are not denied
reasonable access to affordable treatments and essential diagnostic
tests through inappropriate use of the Patents Act".
The Government's response suggests that the Private Members
Bills proposing patent reform to exclude the patenting of genes and
biological materials are redundant and unlikely to be supported.
More information on these Private Members Bills can be found at the
The Government's response almost certainly puts an end to
the calls for legislative reform to exclude the patenting of genes
and biological material. However, Federal Court proceedings are
currently in progress to consider whether isolated genes can be
considered legitimate patentable subject matter. A decision on
these proceedings is expected in 2012 and we will keep you promptly
informed once the decision is released.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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