Prior art searches

8.58 DP 68 discussed IP Australia’s practices in relation to prior art searches and the resources available to Australian patent examiners in this regard.^[101] In addition to performing prior art searches for Australian patent applications, IP Australia conducts searches for patent offices in other jurisdictions—as one of the twelve International Searching Authorities under the PCT^[102] and pursuant to bilateral arrangements with the patent offices of certain countries in the Asia–Pacific region.^[103] In 2003, IP Australia conducted over 3,500 such prior art searches.^[104]

8.59 Conflicting views were expressed about IP Australia’s capacity to conduct prior art searches for patent applications claiming genetic materials and technologies. Concerns were voiced about the capacity of IP Australia to identify all relevant prior art against which the novelty and inventiveness of a claimed genetic invention should be tested.^[105] However, others noted that IP Australia’s searching practices are comparable to other major patent offices and subject to on-going internal review.^[106]

8.60 Two recent reports have considered IP Australia’s practices relating to prior art searches and have recommended limited reforms. The 2000 report of the Intellectual Property and Competition Review Committee (IPCRC Report) recommended that IP Australia should ‘devote additional resources to improving the quality of examination, particularly to prior art processes including through enhanced use of technology’.^[107] Similarly, a 2003 report on patenting business systems by the Advisory Council on Intellectual Property (ACIP Business Systems Report) encouraged IP Australia to ‘make further use of non-patent literature during the examination process’.^[108] Both reports also considered that increased co-operation between IP Australia and other patent offices in relation to prior art searches would be beneficial.^[109]

8.61 On the basis of the limited evidence presented to the Inquiry, it does not appear that IP Australia’s practices relating to prior art searches raise particular issues in the context of gene patent applications. If implemented by IP Australia, the recommendations made in the IPCRC Report and the ACIP Business Systems Report may benefit examiners conducting prior art searches in the genetics field. In addition, as discussed in Chapter 6, the disclosure obligations and the definition of prior art in the Patents Act have recently been amended.^[110] The impact of these changes is yet to be seen,^[111] but such provisions may well result in a wider range of prior art information being made available to IP Australia in relation to all types of technologies. The ALRC does not, therefore, consider that additional reforms to the practices of IP Australia in conducting prior art searches are required at this stage.