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Australian consultation responses 2009

The following is a quick analysis of the responses to the September 2009[1] consultation in Australia about patentable subject matter. (review webpage) The consultation was held by the Australian government's Advisory Council on Intellectual Property (ACIP). (This should not be confused with the ACIP's "Patentable Subject Matter Options Paper", for which there were 16 submissions.)

"ACIP expects to provide a final report to the Australian Government in late 2010."[2]

(Note: that webpage previously said "July 2010")

This consultation was one of a series held throughout 2009, but the others dealt with not so important topics.

Official documents

These are links to the ACIP pages about or related to the consultation:

Overview

Only Microsoft participated as a software developer in this consultation; maybe this is indicative that the consultation failed to reach the necessary audience?

The responses

ANU Response Patentability

Australian National University prepared by Michael Curtotti, Senior Legal Officer, ANU Legal Office

"The ANU considers that it is preferable that software not be patentable and more generally that patentability not be further extended." pdf page 9, answer to question 10
"Software development has been a flourishing area of innovation extending well before it began to attract patent innovation." pdf page 10
"There is thus a case for legislative reversal of court decisions which have extended patentability to software" page 11

IP01 Mike Lloyd

Interesting info about case law in Oz (and in UK and USA). Doesn't lobby hard either way, but leans towards allowing all patents:

"These ‘margins’, where ‘new developments in science and technology occur’ tend to be among the more valuable and faster growing areas of economic activity in Australia and elsewhere. The margins have included agriculture chemicals, biotechnology, computer software, medical technology, genetic engineering, internet commerce and professional services. It seems strange to question the patentability of new inventions in these areas of new technology where the same questions do not exist for inventions in more traditional economic areas."
"Nonetheless there may need to be a limit to patentable subject matter where this clashes with ‘public policy’, which appears to be the question that the Commissioner of Patents, Branson J and the Full Federal Court all appeared to struggle with in their respective decisions on the Grant Patent."

IP02 Chris O'Sullivan

Chris O'Sullivan, patent attorney and consultant for FB Rice

Mr. O'Sullivan argues for software patents, but on factually debatable grounds:

"On the macro level it could be argued that there is a connection between the European patent office’s exclusion of computer programs from patentability and the fact that the European computer and software industries do not compare favourably with those of the USA where software is patentable."

Mr. O'Sullivan may not be aware of that the EPO has granted tens of thousands of patents on computer programs, or that the USA had a more profitable software industry even before they started granting software patents.

IP08 Kerry Hubick

Dr. Kerry Hubick

Argues that everything should be patentable. He justifies patenting software because it helps SMEs sell their ideas and because some software has a long lifecycle.

"The European approach of having a computer turned into a specific-purpose machine is a suitable approach to solving patentability of software. The US's 'anything under the sun by the hand of man' is adequately broad to adopt and is equivalent to an 'artificial state of affairs'."

Dr. Kerry thinks the European approach of allowing patents on computer programs is great. Maybe he should talk to Mr. O'Sullivan (above).

IP03 Luigi Palombi

The Regulatory Institutions Network, The Australian National University, Canberra (Dr Luigi Palombi)

This is a long brief with very little over software. It's possible I've missed something important in my skimming, but from these excerpts it seems against software patenting:

"Neither should patents be granted for inventions that involve the technical application of excludible subject matter, such as computer programs and isolated biological materials, in methods and processes that are obvious or that achieve obvious results, particularly, if there is no tangible output." page 17
"Moreover, neither should patents be granted for inventions that involve the technical application of excluded subject matter, such as computer programs, in obvious apparatuses or to achieve obvious results, particularly if the results produce no tangible output." page 32

IP04 Michael Kraemer

Short brief. Doesn't mention software at all, but generally argues for patenting everything:

"The effect of removing limits on patentable subject matter would probably be beneficial."

Mr. Kraemer attaches an article which talks about the need for "IP" - but there's no clarifications on whether the article argues for copyright on software, trademarks on software, or patents on software.

IP05 Humanist Society of Victoria

Nothing about software, this brief argues against patents on medecins and genes.

IP06 NZIPA

New Zealand Institute of Patent Attorneys

They argue for patents on everything:

"We believe that no subject matter should be legislated against."

IP07 Dr I F Turnbull

Doesn't clearly take a position regarding software. Here's the most relevant part, but the context would have to be read to fully understand the implication:

"Thirdly, many new areas of inventions are predictable early, in broad terms, even though the means of achieving the required outcome remain to be solved. For examples, increasing computer memory size and speed were easily predicted as fundamental to advancing computer technologies;"

IP09 Vivien Santer

Dr Vivien Santer, Patent Attorney

She generally argues against limits on patentability, and there's no direct mention of software in the brief, but there's this comment which seems to talk about the software industry:

"If an innovation is in a field in which being first to market is the most important factor in commercial success and in which market life is short, the cost of patenting is unlikely to be considered worthwhile, and any limitations on patentability will be irrelevant to the innovators."

This seems to say that innovators in fields such as software do not need patents: limits on patentability are no problem. But, she repeatedly argues against limitations, so it's not clear.

She mentions at the end that If any exclusion is stated, it should be interpreted as narrowly as possible, but this seems to be in the context of "exceptions from patentability allowed under TRIPS Agreement" (which is a question of genes and other explicit exceptions TRIPS art 27.3).

IP10 AMPICTA

Australian Intellectual Property Owners

"Any product that requires a substantive degree of skill to commercialise should be patentable (provided it is also novel and inventive). This includes software[...]"

IP11 Dianne Nicol and Jane Nielsen

No mention of software, computers, or programs.

IP12 Justine Pila

Justine Pila: University Lecturer in Intellectual Property, University of Oxford Faculty of Law

Doesn't talk about software, computers, or programs.

IP13 Microsoft Corporation

Short brief arguing for software patents.

"Narrower, technology‐specific exclusions will – at a minimum – increase cost of patenting or restrict scope of protection, distorting the incentive structure in ways that typically will decrease patenting and inventive investments in the affected field of technology."

IP14 Australian Association of Pathalogical Practices

Makes no mention of software, computers, or programs.

IP15 Doug Calhoun

Retired New Zealand patent lawyer

Makes no mention of software, computers, or programs.

IP16 IPTA

Institute of Patent and Trademark attorneys of Australia

Everything should be patentable.

Stands back from the keyboard in aamzmenet! Thanks!

IP18 Davies Collison Cave

Patent and Trademark Attorneys Australia and New Zealand

"Limits can be placed on inherently patentable subject matter on economic grounds where there is overwhelming evidence to support and justify a limit. There is currently no evidence to support and justify change to the existing Australian law."

The brief has nothing about software, computers, or programs.

IP19 FB Rice - The IP Navigators

http://www.acip.gov.au/reviewpatentable/IP19%20FB%20Rice%20&%20Co.pdf

Argues for software patents based on the erroneous idea that Europe doesn't have software patents:

"To give an example, we believe one can compare and contrast the European and US approaches to protecting software patents. Where there is an imposition of a limitation in regard to software, one might imagine we would see more nimble IT developers (organisations or individuals) using that freedom from concern of infringing patent rights to bring software-based innovations more quickly to the marketplace than is the case where software patents are allowed. On the other hand, in countries where software patents are not allowed, many software developers may well suffer from the fact that they are not in a position to create a patent position that allows them to licence or otherwise sell their development."
"While we are unaware of any empirical evidence, we can say with respect to software, that it is by no means clear that European IT developers (or Europeans in general) are in some way economically better off than US-based developers (or US citizens in general) that are required to abide in a system that allows such patents. Given this, we would err on the side of arguing against limitations in this field."

Alternative article with live link: http://www.fbrice.com.au/publication/Who_owns_that_IP.aspx

IP20 - RCPA

About gene patents. No substantive mention of software, computers, or programs.

IP21 David Brennan

Associate Professor, Melbourne Law School

Doesn't mention software, computers, or programs.

IP22 Anton Hughes

Anton Hughes, Faculty of Law, University of Tasmania

Lists problems of software patents, cites An Empirical Look at Software Patents, and cites Patent Failure.

"This will be particularly so in fields like software development, where the highly distributed nature of competition, the incremental nature of innovations and the short market life of products means that the patent grant is likely to have negative rather than positive effects on incentives to innovate."


"In the software context, patent literature is rarely of use to programmers. This is probably due both the abstract nature of the inventions involved, and the aim of the draftsman to author the claim in language as broad as possible. So in this field at least, it must be questioned whether the absence of patent protection should be considered a loss at all."

IP23 ResMed

Argues for broad patentability, but doesn't talk about software or computer programs.

IP24 HGSA additional statement

Nothing about software.

IP25 Anna George

Former trade negotiator for Australia's Department of Foreign Affairs and Trade. A seven page submission which introduces itself with:

"I will not be making a detailed submission to your Council as I have consulted and commented upon the submission put forward by Dr Luigi Palombi. I would like to register that I strongly support all aspects of his submission.

IP26 Hazel Moir

A 63-page brief, with sections dealing specifically with software.

"Long-standing boundaries that were integral to balance in the patent system should be re-instated. These will need to be specifically written into the statute, and should be drafted as absolute exclusions. These welfare-enhancing boundaries include absolute prohibitions on: mathematical algorithms; software; methods of doing business;

Many interesting parts to this brief.

IP27 IPRIA

Intellectual Property Research Institute Of Australia

No clear position. Lays out four criteria for exclusion from the patent system but there's no discussion about software and whether it would fall within these criteria.

IP28 Cancer Council Australia

Cancer Council Australia

Doesn't deal with software.

IP29 Australian Seed Federation

Australian Seed Federation

Doesn't deal with software.

IP30 F P Old

Individual patent attorney submission, specifically to argue for software patents.

"The British engineering and computing industries suffer from the enormous disadvantage that they are of the view that computer implemented inventions "are not patentable" "

Strange argument given that the UK's top court approved a pure software patent in the Symbian case.

"[Waratek Pty Ltd] is in the process of migrating to the USA in order to be close to the centre of world computing and within the next 12 months will release a combined hardware and software product which incorporates over 100 inventions. If the same technology had been conceived in Britain, it is highly likely that no attempt to patent the technology would have been made, and that investors would not have backed the company financially because they would not have had the prospect of patent protection to ensure adequate recoupment of their principal and an adequate return. The almost certain consequence of such lack of financial investment would be failure of the inventions to come to market.

This assumption makes no sense. Anyone can apply for a patent in the USA, or in the UK, regardless of where they're based.

Presumably it's easier to commercialize an invention if one is based in a country that restricts competitors' use of that invention.

IP31 FICPI attachment

The Australian Federation Of Intellectual Property Attorneys

Speaking of a 2002 consultation, FICPI says:

"[...] in that submission we argued that developments in the fields of software, e-commerce and business methods should not be treated, from the patentability perspective, any differently to other forms of 'manner of manufacture',
"We are not aware of any economic justification for placing limits on inherently patentable subject matter."
"FICPI Australia is not aware of any empirical data on the consequences on innovation of imposing or removing limits on patentable subject matter."

IP33 Law Council

Law Council of Australia

No comment about software.

Recommends no change to current law, makes various comments about legal details.

IP34 IP Australia

"we are the Australian Government agency responsible for administering intellectual property (IP) rights covering Patents, Trade Marks, Designs and Plant Breeder’s Rights."

Doesn't discuss software, but, looking at pros and cons, recommends moving to a European-style system with an explicit list of exclusions. A second option, while noting that "the first option is IP Australia’s preferred option", is to keep the "manner of manufacture" but separate it from the tests of novelty, inventive step, and usefulness.

IP35 DIISR

Australian government's Department of Innovation Industry, Science and Research

One page submission. Doesn't discuss software, just notes previous reports, objectives, obligations.

IP36 Medicines Australia

Doesn't discuss software.

Related pages on ESP Wiki

References

  1. ↑ http://www.ipaustralia.gov.au/resources/news_new_archived_2009.shtml#48
  2. ↑ http://www.acip.gov.au/reviews.html#subject
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