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, now that it has been operating for a year, to enquire whether the Patents Act 1990 ("the Act") 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. The Act and its accompanying Regulations ("the Regulations") are flawed. The Australian public and innovation and industrial development in this country have been done a considerable and expensive disservice. I would venture to suggest that under the 1990 Act the "intelligent layman" envisaged by IPAC has even less chance of securing a patent without professional assistance than he or she did under the 1952 Act. It is particularly galling that the Australian public have been served up with what, as I intend to demonstrate, is a mess in the guise of "a plain English Act".
I should stress that in making these comments I am not suggesting that all of the drafting is faulty or unwelcome, nor am I suggesting that many of the substantive changes are not desirable. The thrust of my argument is that the job of redrafting the Act could have been done much better than it was.
The structure of the Act and Regulations is poorly through out. There is a very inconsistent grouping of common subject matter within the Act. One finds, for example, in sections 2 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 provisions of definitions in a schedule 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 on its face, is defined and if so whether that definition artificially broadens or contracts that normal meaning. Why was the draftsman 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 is schedule 1. Why does this occur so inconsistently?
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 things easier to change. 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 section 41 that a complete specification may be filed within 12 months after the application date. In the 1990 Act, by contrast, one is advised, rather unhelpfully, 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 firstly 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.
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 with considerable effort. IPAC used the words, "find, understand and consider relevant" the Act uses, "ascertain, understand and consider relevant". Why is the old fashioned four letter word "find" replaced 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, I would submit, have been achieved without this loss of well understood terminology.
Section 138 introduced for the first time as a ground of invalidity of a patent that the "patent was obtained by fraud". It has been suggested (for instance by Richard McCormack speaking at the 1992 Annual Conference of the Institute of Patent Attorneys of Australia) that if a patentee had known of relevant prior art and withheld it from the Patent Office during examination this could of itself constitute a ground for invalidity of the patent. If this is so it seems surprising that this substantial change to the Act has been introduced without any discussion by IPAC or comment in the Explanatory Memorandum issued with the Act.
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". The failure to include prescribed forms in the Regulations strongly disadvantages those who do not regularly practice under the Act. These are exactly the people who IPAC regarded as needing a "plain English Act". For those of us who do practice regularly under the Act the complete change of terminology and the new forms has 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 applicants. Does the Government really believe that this cost penalty to applicants is justified by any perceived benefit from the new terminology and new forms?
Space does not allow a complete catalogue of the deficiencies of the Act and Regulations. It is believed, however, that the examples given above justify the author's contention that the 1990 Act is clearly a host opportunity for legislative reform. Other authors have made similar comments. Ricketson has said "whatever one may think of the plain English approach adopted in the Patents Act 1990 and the Patents Regulations 1991, serious concerns remain about the drafting of some of its provisions, …" (Sam Ricketson "The Future of Australian Intellectual Property Law Reform and Administration", Australia Intellectual Property Journal, Vol 3, No 1, p3). Hamer comments "unfortunately section 117 has been drafted with less than desirable precision" (Richard Hamer, "The 1990 Patents Act. Re-examination, Contributory Infringement and Transitional Provisions", Intellectual Property Forum, Issue 16, February 1992). Collins notes "Beneficial changes are clearly embodied in the legislation, but chaos reigns supreme" (Terrence Collins, 1990 Presidential Address, Institute of Patent Attorneys of Australia).
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, are easy to understand and are 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" (see above). Collins, who was 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 relegated 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 (see above).
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 draftsman must reflect the complexity of the task. The Patent Office must fight much harder in the bureaucratic jungle to see that its views are heard, and 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.