ARC Secretariat --- "Report No 43 - Administrative Review of Patents Decisions - Backgrounder to the Report" [1999] AdminRw 4; (1999) 51 Admin Review 13

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REPORT NO 43, ADMINISTRATIVE REVIEW OF PATENTS DECISIONS

This article provides some background to the Council's most recent report - Administrative Review of Patents Decisions. The Report was released in February 1999. Copies of the Report can be obtained by contacting the Council's Secretariat on tel [phone], or by visiting the Council's website at law.gov.au/arc.

BACKGROUNDER TO THE REPORT

ARC Secretariat

In its most recent report to the Attorney-General, the Council turned its attention to the administrative review of patents decisions under the Patents Act 1990 ('Act'), and the Patents Regulations ('Regulations'). Although a discrete area of decision-making, patents decisions have enormous economic implications for inventors and companies, as well as society in general.

In Report No 43, Administrative Review of Patents Decisions, the Council focussed on two separate issues:

• first, which decisions under the Act and Regulations should be subject to review; and

• second, where a decision is to be subject to review, which are the appropriate forums for conducting that review.

In determining which decisions should be subject to review, the Council assessed the range of decisions made under the Act and Regulations against the criteria of whether the decision will, or is likely to, affect the interests of a person. The Council also examined whether any of the decisions were of a type that fell into the Council's recognised categories for exemption from review.

The Council concluded that all decisions by the Commissioner of Patents made under the Act and Regulations (other than decisions relating to patent attorneys) that are currently not subject to review, should be subject to merits review.

In response to submissions on the matter, the Council specifically considered whether decisions regarding patent attorneys constituted a special case for excluding merits review. The Council concluded that, with the exception of decisions whether to grant a supplementary examination under the Regulations, decisions relating to patent attorneys should not be excluded from merits review.

In the Council's view, decisions whether to grant a supplementary examination are closely related to the assessment of examinations, and are therefore not appropriate for merits review.

In determining the appropriate forums for review of patents decisions, the Council considered the advantages and disadvantages of three different avenues: merits review by the Administrative Appeals Tribunal ('AAT'); judicial review by the Federal Court under specific provisions of the Act and Regulations; and judicial review by the Federal Court under the Administrative Decisions (Judicial Review) Act 1977. Factors considered by the Council included: flexibility of proceedings; costs; expertise; finality of determinations; and power to award costs.

The Council concluded that the AAT would be well equipped to deal with merits review of all patents decisions, in particular because of the capacity to have matters dealt with by members with specialist expertise in areas of relevance to patent matters. However, given the pending reform of Commonwealth merits review tribunals, the Council recommended that the existing system of patent decisions be retained until the structure and procedures of the new Administrative Review Tribunal are determined. The Council recommended that, when this occurs, the system of administrative review of patent decisions should be reconsidered.

The publication of the final report was preceded by the release of an issues paper, Administrative Review and Patents Decisions, by the Council in 1994, which invited submissions on the matters raised in the paper. Informal discussions were also held with the Federal Court to receive its views on the matters raised in the paper.

In the course of these consultations, concerns were raised regarding the limitation imposed on the Federal Court by section 44 of the Administrative Appeals Tribunal Act 1975. The Council, therefore, postponed its review of patents decisions, to first address the issue of appeals under section 44 in its Report No 41, Appeals from the Administrative Appeals Tribunal to the Federal Court. This accounted for the delay in presenting the final patents Report.