A Comparative Analysis of the Australian Patent Office's Examination of Biotechnology Reach-Through Patent Claims

Abstract

In an earlier study we analysed how the United States Patent and Trade Mark Office, the European Patent Office and the Japan Patent Office (jointly referred to as the 'Trilateral Offices' or TOs) assessed reach-through patent claims in biotechnology, under the requirements of 'utility', 'written description' and 'enablement' (as they are referred to in the US). We found that any claim that was a reach-through claim was assessed to be invalid by the TOs, and therefore filtered out from grant. This study analyses how the same claims from the TOs' study are assessed by the Australian Patent Office (APO), under the equivalent Australian requirements of 'manner of manufacture and description of use', 'clarity, succinctness and fair basis', and 'full description and best method'. We find that under Australian practice not all types of reach-through claims are filtered out from grant of a patent. This suggests that one or other of the patent offices is applying the wrong standard in examination of these claims. In our view, the examination standard applied by the APO is too lenient. The Australian legislation should be reformed by adopting patentability requirements that mirror the utility, written description and enablement requirements of the TOs.

Keywords: patents, trade marks, reach-through patent claims, biotechnology, utility, written description, enablement, United States Patent and Trade Mark Office

JEL Classification: K0, K00, K19, K29, K39