Dr Dimitrios Eliades, a barrister and lecturer at the Queensland University of Technology, has voiced his concern in the aftermath of University of British Columbia v Conor Medsystems [2006] FCAFC 154, which raised the possibility that a patent could be declared void if someone has been incorrectly named as an inventor of the patented product.

Eliades believes that the outcome this and other cases are stifling innovation in Australia, with inventors fearing that a technical oversight could lead to their patent being invalid.

“The question of entitlement to a patent has been raised in several cases in the Federal Court where there has been a failure to name all of the inventors or where a person has been invalidly named on a patent,” he said.

“It’s killing innovation. I don’t think that [inventors are] going to be too keen to spend money on research and development if they know that something that could protect it could be overturned on a technicality like that.”

Describing the legislation as “outdated”, Dr Eliades believes that the laws as they stand aren’t suitable for the modern day where inventions are increasingly developed through collaboration between a larger number of people.

“We’re living in an environment where it’s quite common for there to be collaboration between universities and institutions,” he said.

“Each team might have up to 10 people, with a number of them making an inventive contribution to the ultimate product or method that finds its way to becoming a patent. Where these laws really bite is that if you fail to include one of your team members who has made an inventive contribution, or you add someone who hasn’t, that could cause the downfall of the patent.”

In a submission to the Advisory Council on Intellectual Property, Dr Eliades has recommended amending Australia’s patent system to bring it in line with the UK’s. This would allow patents to be modified while remaining valid, affording inventors greater protection.

While agreeing in principal with Dr Eliades’ recommendation, Corrs Chambers Westgarth partner Oddette Gourley is of the view that the University of British Columbia v Conor Medsystems case wasn’t as conclusive as Dr Eliades suggests.

Gourley explained that the section of the case which dealt with the issue was a limited strike out point and while the Federal Court refused to strike out the application to have patent revoked, the case settled before the Court actually had the issue was factually investigated or decided. Gourley believes that had the case not settled other sections of the Patents Act, such as those giving the court discretion not to revoke a patent, may have saved the patent.

This aside, Gourley agrees with Dr Eliades that there should be a better system for dealing with these issues.

“I think Dr Eliades is right in that we ought to be able to fix problems like this very easily and there isn’t currently any clear provision in the Australian Patents Act that allows that to be done. I think this is very fixable by taking the US or the UK approach and I think that merits consideration,” she said. “It would be nice if Australia had an easier solution.”

In his submission, Dr Eliades has also recommended reforming Australia’s system for enforcing patents to make it simpler and less expensive.

“Its shouldn’t be a costly exercise where you have to go running to the Federal Court to spend upwards of $200,000 for a patent enforcement — and that’s a fairly modest patent case. You can imagine the invention’s got to be worth a bit. It’s would have to have some legs to it commercially that you’ll be able to recover to justify spending so much to litigate for it,” he said.

“But what happens to all those inventions which haven’t had the chance to have venture capitalists or potential manufacturers enquire into them? The inventor is trying really hard to commercialise it, then all of a sudden there’s some competitor making it. Does the inventor launch litigation to protect something they don’t know the value of yet? I don’t think that’s helpful in the system.”

The Advisory Council on Intellectual Property is currently undertaking a review of patent enforcement strategies, with a discussion paper set to be released in mid-2008.