In the drafting of the Patents Act 1990 and its accompanying Regulations, undue emphasis was placed on pushing substantive provisions out of the Act and into the Regulations. While this may suit the bureaucratic convenience, it makes the Act and Regulations more difficult to understand and implement; it allows substantive provisions to be changed without the scrutiny of Parliament; and it is the complete antithesis of the legislative reform so desperately needed.
It is, I believe, generally accepted by practitioners in the field that the Patents Act 1990 (the Act) and its accompanying Regulations (the Regulations) represent a seriously flawed attempt to address the legitimate need for legislative reform. In this article I seek to examine some of the reasons why the Act has been so badly received and ways in which a repetition of this legislative failure may be avoided.
In its 1990 submission to the Senate Standing Committee on Legal and Constitutional Affairs, "Reducing the Cost of Justice", the Australian Law Reform Commission said;
"The first way to reduce the cost is to eliminate the opportunity for disputes to arise. Uncertainty or obscurity of the law may contribute to the existence of a dispute.
Laws should be reviewed to reduce uncertainty in application or meaning; plain English is essential."(Annual Report 1990, Australian Law Reform Commission, Appendix 2)
These desirable objects are mirrored in the IPAC Report wherein it was recommended:
"In addition to the changes already suggested, everything possible should be done to streamline the provisions and procedures of the Patents Act. As a general aim, procedures before the Office should be sufficiently simple and free of exceptions for an intelligent layman to be able to understand and use them"
(The Industrial Advisory Committee Report Patents, Innovation and Competition in Australia, 1984)
It is instructive to inquire whether the Patents Act 1990 has "eliminated the opportunity for disputes to arise" and has avoided the "uncertainty or obscurity … which may contribute to the existence of a dispute".
I would submit that the opportunity to produce a clearer, simpler Act has been missed as the Act and its accompanying Regulations are flawed. The Australian public and industrial development in this country have both been done a considerable and expensive disservice. The "intelligent layman" envisaged by IPAC has now even less chance of securing a patent without professional assistance than was the case under the 1952 Act.
The substantive reforms proposed by IPAC have been well received and, insofar as they are reflected in the Act, they have been welcomed. The principal problems with the Act and Regulations are that:
Dealing firstly with the last of these propositions, I suggest that the determination to put as many of the substantive provisions as possible into the Regulations was misguided. The official reasoning seems to be that it makes these provisions easier to change at a later date. This emphasis on administrative convenience ahead of simplification of the legislation is deplorable.
In the Patents Act 1952, for instance, one could simply determine from s41 that a complete specification may be filed within 12 months of the application date. In the 1990 Act, by contrast, one is merely advised that a complete application associated with a provisional application may be filed at any time within the "prescribed period". The Regulations then provide the information that the prescribed period is 12 months. This simple example is important in two respects. It is, first, a step which is likely to be undertaken by individual applicants without professional assistance. These are exactly the people who should most benefit from "plain English" legislation. Secondly, if the 12-month period, which has been enshrined in our law since 1906 is to be changed, surely it should be done by an act of parliament, not merely by administrative action without full public scrutiny.
The role of Regulations is summarised in s5.33 of the Legislation Handbook in the following terms:
"Matters of detail and matters liable to frequent change should be dealt with by regulations, for example:-
Legislation Handbook (Australian Government Publishing Service, Canberra, July 1988).
- prescribing fees to be paid for various services;
- prescribing forms for use in connection with legislation;
- addresses where applications should be lodged; and
- time within which certain steps should be taken."
I would submit that the Regulations fail to limit themselves to "matters of detail" and to "matters liable to frequent change" (emphasis added). In many instances they are directed to matters which are unlikely to change frequently and which are of such fundamental importance that they should not be amended other than by legislation. The relegation of the framework of the patent system into the Regulations has had the result that the Act is unintelligible to anyone who is not prepared to spend a considerable amount of time studying it.
In my opinion the absolute determination of the Commissioner of Patents and others to take everything that could possibly be moved out of the Act and to cream it into the Regulations was an approach guided more by a desire for bureaucratic convenience than an attempt to improve the quality of the legislative structure under which innovation in Australia works. Having put a host of things into the Regulations that should never have been there, the framers of the Regulations then compounded the problems of the "intelligent layman" by leaving out the forms which are so clearly one of the things that should be in the Regulations.
The structure of the Act and Regulations is poorly thought out. There is a very inconsistent grouping of common subject-matter within the Act. One finds, for example, in ss2 to 12, fundamental provisions relating to the deposit of micro-organisms, novelty and inventive step, secret use and a grab-bag of other matters jumbled up together and out of context. Some of these provisions are cross-referenced to other relevant sections of the Act, others are not. Another example of this poor structure is found in the provisions relating to convention priority which are scattered through the Act and Regulations.
The provision of definitions in a Sched to the Act seems, superficially, a good idea. In practice even experienced practitioners are forced to check constantly to see if a term, which appears to be clear at face value, is defined and, if so, whether that definition artificially broadens or contracts that normal meaning. Why was the drafter so adamant in rejecting the suggestion that defined terms be italicised or otherwise distinguished in the text of the Act? The confusion is highlighted by the occasional footnote drawing attention to a definition in Sched 1. Why do these footnotes occur so inconsistently?
Those sections of the Act which are newly drafted are often unclear, prolix and poorly structured. Sections 54, 55 and 56 relating to publication of documents by the Patent Office are, for instance, understandable only when considerable effort. IPAC used the words "find, understand and consider relevant", the Act uses "ascertain, understand and consider with "ascertain"? Section 117 relating to "contributory infringement" is ambiguous and poorly structured. The redrafting has abandoned terminology which has been subject to judicial interpretation over many years. The substantive changes proposed by IPAC and the proper preparation of a "plain English" Act could have been achieved without the loss of well-understood terminology.
While the drafting of the Act is unfortunate, that of the Regulations is plainly inept. A trivial but telling example is the use of the words "the end of the day immediately before the day on which the application becomes open to public inspection" (reg 1.5(1)(b)) to mean "before the application is published". For those of us who do practice regularly under the Act, the complete change of terminology and the new forms have meant an extremely costly and time-consuming revision of literally hundreds of precedents. Each firm operating in the field has had to bear this expense. These costs are ultimately borne by the patent applications. Does the Government really believe that this cost penalty to applicants is justified by any perceived benefit from the new terminology and new forms?
The provisions of the Act may be contrasted with those of the Patent Cooperation Treaty and its accompanying Rules and with the European Patent Convention. These are detailed but clear. They are well-structured, easy to understand and readily complied with.
It may be helpful to consider why the outcome of the review of the Patents Act has been such a notable failure. This is not for the purpose of sheeting home blame but rather to avoid its recurrence in the proposed revision of the trade mark and design Acts.
There appears to have been a refusal by the Office of the Parliamentary Draftsman and of the Attorney-General's Department to consult directly with those people and organisations having practical experience with the operation of the 1952 Act. Ricketson has remarked:
"it appeared that suggestions from the working party were often rejected or ignored by the Parliamentary Draftsman. As a general comment, it involves considerable cost and inconvenience to users of the patent system if the views of practitioners and officials are not taken into account by drafters who are essentially unfamiliar with patent law."
Sam Ricketson, "The Future of Australian Intellectual Property Law Reform and Administration" (1992)3 AIPJ 3 at 21
Collins, who was also closely involved, has similar comments, saying:
"A different person drafts the Bill and the Regulations respectively, and in each case policy requires that the draftsmen work from instructions which convey the intent, but not possible form, of the legislation. The process is therefore cumbersome and fraught with peril, particularly when, as in the present case, specialist knowledge is required to properly understand the intent. The situation has been made worse in the present case because the draftsmen have adopted the "plain English" drafting style, and also because a number of substantive issues have been related to the Regulations. The first factor has, in some respects, confused rather than clarified the legislation, and the second has subjected the draftsmen of the Regulations to a specialist knowledge problem much greater than what would be normally encountered".
Terrence Collins, 1990 Presidential Address, Institute of Patent Attorneys of Australia.
The bureaucratic ideal of nothing in the Act and everything in the Regulations must be subjugated to the need of the users of the legislation to have a clear and coherent "story", that can be followed and understood without darting backwards and forwards between the Act and Regulations. It is imperative that those of us who have to labour under the legislation urge our political masters to insist that the job of drafting legislation and Regulations is done competently and conscientiously, with a proper concern for the users of the legislation.
The avoidance of these problems in the future will only come about by much closer cooperation between all involved. The Parliamentary Draftsman and the Attorney-General must work closely with the users of the intellectual property system when drafting legislation and Regulations in this field. The ability of the drafter must reflect the complexity of the task. The professions will, unfortunately, have to assume an even greater burden than they have in the past to ensure that the legislature and the bureaucracy do the job they should. Merely paying our taxes is not enough!