Evergreen dilemma: law blind to patent's purpose

This notification will alert major patent holders to the intention of generic manufacturers to enter the market, thereby encouraging them to take preventive action. In theory, this could act as a deterrent to generic drugs reaching the market in the first place.

Labor is concerned that this process will create incentives for major drug companies to file questionable new patents in the face of competition from generic manufacturers.

Opposition Leader Mark Latham's amendment would hopefully preclude these applications from being lodged in the first place, by creating a disincentive for the filing of new patents, should they turn out to be dodgy.

Prime Minister John Howard wasted no time in branding this amendment unnecessary, choosing instead to retain faith in the legal system. He maintains that our courts would never allow such spurious patents. Dodgy patents were not an issue because they wouldn't be granted to begin with.

But both these arguments are missing the point, which is: how can a dodgy patent be recognised in the first place?

The trouble is that dodgy is not a ground for examination under patent law. It is a subjective term, and one that exists only in the eye of the beholder, so to speak.

While the practice of evergreening would be likely to appear bogus from the perspective of a health economist, it would not be so from the view of a patent lawyer. Patent law is written for the latter, not the former.

To attempt to marry the two perspectives is logistically impossible, because there is simply no scope under patent law for the patentee's motives to be assessed alongside the validity of the patent.

An evergreen patent may well pass the standard of innovation, even though it contributes little or nothing to social welfare. So long as there is an invention, the law is blind to the purpose for which it is being patented, and social and economic issues don't get a look-in.