Chris Dent

The patent system is an integral part of national economies. This paper is founded on a belief that the underlying structure of that system is, currently, incompletely understood. This lack does not impact on the operation of the system but may contribute to the effectiveness of attempts to reform the system. A structure is proposed that includes aspects of the system that are fundamental to its operation - the principles of state power, individual choice and the value of knowledge - and normative aspects, or "precepts". These precepts are incentive, accountability, accessibility and the acceptance of risk. The precepts are connected to, but distinct from, the purposes of individual players in the system. The suggested structure allows for an understanding of the system that separates the mutable from the immutable: a distinction that provides guidance for that which may be changed, and that which may not be altered, by government policy.

The opposition procedure in Australian patent law is an effective tool for improving the quality of granted patents. The current, pre-grant, process is, however, open to abuse by opponents who merely wish to delay the grant of a patent. Received wisdom has it that a post-grant procedure would be contrary to the Australian Constitution - that is, for a delegate of the Commissioner of Patents to decide an opposition post-grant would be an improper exercise of judicial power. This article details the various tests for judicial power to assess the veracity of this wisdom. The conclusion, after a review of the High Court precedents and commentary, is that a post-grant opposition procedure, assuming it is substantially similar to the current pre-grant process, would not offend the Constitution.

Commentators argue that the patent system is uncertain and that the uncertainty should be reduced. The application of a Foucaultian perspective demonstrates that the interdisciplinary nature of the system means that it will necessarily be uncertain - where uncertainty is understood to be the result of a lack of understanding produced by differences in the training of the personnel involved. In the words of Foucault, the argument is that uncertainty is unavoidable because of the different discourses and different internalised discursive practices that constitute the patent system overall. The multiple groups of players that contribute to the system results in many actions being observed across discursive boundaries. The article differentiates between perceptions that are contingent (intra-discursive understandings) and uncertain (inter-discursive understandings). The discursive nature of the system also, however, produces its stability. The reproduction of the discourses through the repetition of discursive practices means that the system, overall, has significant inertia.

The quality of patents granted by national patent offices is currently the focus of significant investigation worldwide. The vast majority of this work examines the quality of the end-product of the examination process - the patents themselves. This Working Paper is founded upon the perception that it is equally important to explore the quality of the process that precedes the patent grant - the examination of patent applications by patent office examiners.

The Paper argues that an effective way to assess the quality of the process is to consider the decision-making practices adopted by examiners. This perspective rests on the recognition of the importance of decision-making in the patent examination process - decisions made range from establishing search strategies for prior art to the final assessments with respect to novelty and inventive step. This aspect of the process is considered here in the context of work on decisionmaking theories found in psychology. Various models of decision-making are explored in this Paper that may be applied to the patent examination process in order to deepen our understanding of the granting of patents.

This Paper represents the start of a decision-focused approach to assessing the quality of the patent system. The models presented here provide a grounding for future, empirical, research into the minutiae of the examination process. A number of approaches for such research rounds out this Paper. Although the discussion of is founded on a description of the processes within IP Australia, any research based on this work will contribute to the optimisation of the patent system globally.

This Working Paper reviews issues related to research access to patented inventions, with a particular focus on the role of research exemptions (or experimental use exemptions) in protecting such access. It outlines factors that may affect the ability of researchers to access patented inventions for legitimate research purposes, it reviews evidence of current and anticipated limitations on access, and explores different options for the formulation of research exemptions that balance research use and patent holder’s rights.