Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act and Regulations 2018

Overview

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the Act) received Royal Assent on 24 August 2018.  

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Regulations 2018 (“the Regulations”) was registered on the Federal Register of Legislation on 16 October 2018. 

The Act was the first piece of legislation implementing the Government’s response to the Productivity Commission inquiry report into Australia’s intellectual property arrangements. 

Consultation 

From 23 October 2017 to 4 December 2017 IP Australia released the draft legislation for consultation. Thank you for your contributions and submissions to the consultation. 

You can read IP Australia’s response to this consultation which details the outcomes and our reasoning.  

Draft legislation and explanatory materials 

Exposure Draft of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2017

Draft Explanatory Memorandum to the Amendment Bill 

Exposure Draft of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Regulations 2017  

Draft Explanatory Statement to the Amendment Regulations 

Overview of the Legislation 

The Act amended the Designs Act 2003 (Designs Act), Patents Act 1990 (Patents Act), Plant Breeder’s Rights Act 1994 (PBR Act) and Trade Marks Act 1995 (Trade Marks Act), Copyright Act 1968 (Copyright Act) and Olympic Insignia Protection Act 1987 (Olympic Insignia Protection Act). 

The Act is divided into two categories, corresponding to the following two schedules: 

• Schedule 1 – Responses to the Productivity Commission 

• Schedule 2 – Other Measures 

Schedule 1 to the Act gives effect to the Government’s response to a number of those recommendations that were ready for immediate implementation. 

• Part 1 repeals a provision in the Copyright Act and amends the Trade Marks Act to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark. 

• Part 2 amends the PBR Act to allow an application for essentially derived variety (EDV) declaration to be made in instances where the plant variety subject of the EDV application is not a registered Plant Breeder’s Right (PBR) or undergoing application for PBR. 

• Part 3 amends the Trade Marks Act to change the period that must elapse before certain actions of non-use actions of trade mark can be taken. 

• Part 4 amends the Patents Act to remove a requirement for patentees to provide the Secretary of the Department of Health with certain data relating to pharmaceutical patents with an extended term. 

Schedule 2 to this Act implemented several measures intended to streamline and align the administration of the Australian IP system along with including technical amendments and a number of other measures (mostly related to PBR enforcement). 

Collectively, the measures in Schedule 2 will improve the way IP Australia is able to deliver service to its customers by reducing the time both customers and IP Australia needs to spend on administrative matters and simplifying processes in the IP rights system. 

• Part 1 amends the Trade Marks Act to clarify that an application can be amended to change the applicant to a person with legal personality if that person can be identified as having made the application. 

• Part 2 amends the Designs, Patents, PBR and Trade Marks Acts to give IP Australia the flexibility to take actions or give information by any means of communication, including by electronic means, and to simplify and align the language used in the legislation. 

• Part 3 amends the Designs, Patents, PBR and Trade Marks Acts to empower the Commissioner and Registrars to determine the preferred means for filing and fee payment. The amendments also empower the Commissioner of Patents and the Registrars of Trade Marks and Designs to determine, by written instrument, how evidence may be filed with IP Australia. 

• Part 4 amends the Patents Act to remove unnecessary signature requirements. 

• Part 5 amends the Designs, Patents, PBR and Trade Marks Acts to enable the Commissioner and the Registrars to arrange for a computer program under their control to make decisions, exercise powers, and comply with obligations under the legislation. 

• Part 6 amends the PBR Act to simplify the requirement for an applicant for PBR to provide an address for service. 

• Part 7 amends the Patents Act to modernise and consolidate the formality requirements for patent specifications. 

• Part 8 introduces protection against unjustified threats of infringement proceedings in the PBR legislation, and introduces additional damages for unjustified threats of infringement proceedings in the Patents, Trade Marks, Designs and PBR legislation. 

• Part 9 amends the PBR Act to clarify and provide certainty about ownership of PBR in a plant variety, and ensure that the Registrar of PBR can correct errors on the Register of Plant Varieties. 

• Part 10 amends the Trade Marks Act to clarify that the Registrar can make appropriate procedural arrangements for all opposition proceedings. 

• Part 11 amends the PBR Act to permit the Federal Court and the Federal Circuit Court to award additional damages under the PBR Act when a PBR in a plant variety is infringed. 

• Part 12 amends the PBR Act to provide a definition of ‘exclusive licensee’ and to allow exclusive licensees to take infringement actions. 

• Part 13 amends the Patents and the Trade Marks Acts to introduce new provisions to ensure that the Trans-Tasman IP Attorneys Board can publish certain personal information of registered patent and/or trade marks attorneys. 

• Part 14 amends the PBR Act to transfer the powers and obligations of the Secretary of the Department of Industry, Innovation and Science to the Registrar of PBR to reflect existing practice. 

• Part 15 amends the Copyright, Olympic Insignia Protection, and Trade Marks Acts to provide the Comptroller-General of Customs with flexibility on how seizure notices are provided and whether personal information is excluded for confidentiality reasons. 

• Part 16 amends the Patents Act and the Trade Marks Act so that prosecution of an offence by an incorporated attorney firm may be started at any time within 5 years after the offence was committed. 

• Part 17 amends the Olympic Insignia Protection Act to correct references to provisions in the Designs Act. 

• Part 18 repeals certain references to New Zealand from the Patents Act that were introduced by the Intellectual Property Laws Amendment Act 2015 to allow for the proposed Single Application Process (SAP) and Single Examination Process (SEP) initiatives under the trans-Tasman Single Economic Market. The New Zealand Parliament decided not to legislate for the SAP and SEP initiatives meaning that these provisions in the Patents Act are no longer required. 

• Part 19 amends the PBR Act to more closely align the PBR Act with the International Convention for the Protection of New Varieties of Plants (the Convention) and to clarify the application of the Convention in Australia. 

• Part 20 relieves the Commissioner of Patents of the obligation to sell copies of complete specifications (as they are now published online). It also makes consequential amendments to the PBR Act following the Statute Update (Smaller Government) Act 2018. 

• Part 21 repeals the whole of the Patents Amendment (Patent Cooperation Treaty) Act 1979, as it is spent. 

Overview of the Regulations 

The Regulations amended the Patents Regulations 1991 (Patents Regulations), Trade Marks Regulations 1995 (Trade Marks Regulations), Designs Regulations 2004 (Designs Regulations), and Plant Breeder's Rights Regulations 1994 (PBR Regulations). 

The Regulations contain amendments that provide administrative arrangements for the new provisions introduced by the Act along with a number of additional amendments that make technical fixes or streamline the administration of Australia’s IP system. 

Schedule 1 of the Regulations contains measures associated with Schedule 1 of the Act: 

• Part 1 amends the PBR Regulations to provide administrative details regarding a new process for EDV declarations 

• Part 2 amends the Trade Marks Regulations to ensure the new time period provided for in subsection 93(2) of the Trade Marks Act also applies to international trade mark applications 

• Part 3 amends the Patents Regulations to make a consequential amendment as a result of the repeal of section 76A of the Patents Act 

Schedule 2 contains measures associated with Schedule 2 of the Act, along with some independent technical fixes and streamlining measures: 

• Part 1 amends the Trade Marks Regulations to prescribe matters for extensions of time for filing notices of intention to defend a trade mark opposition. 

• Part 2 amends the Designs, Patents, PBR, and Trade Marks Regulations to remove requirements for giving notice in writing, as a consequence of new provisions in the principal Acts that permit notification by any means of communication (including by electronic means). This part also amends the Trade Marks Regulations to require the Registrar of Trade Marks to publish the fact of withdrawal of an application, notice, or request in the Official Journal. 

• Part 3 amends the Designs, Patents, PBR, and Trade Marks Regulations to provide consequences for providing information to IP Australia when the information does not comply with a direction. This make also makes consequential amendments due to amendments to the principal Acts regarding the filing of documents and payment of fees. 

• Part 4 amends the Trade Marks Regulations to correct references that relate to International Registrations Designating Australia (IRDAs). 

• Part 5 amends the Patents Regulations to remove the requirements for two types of documents to be signed. 

• Part 6 amends the Designs and Patents Regulations to repeal provisions that provide for addresses for correspondence. It also removes requirements for serving or filing of documents that are inconsistent with changes introduced by Schedule 3 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1). 

• Part 7 amends the Patents Regulations to replace the formality requirements in the Patents Regulations (including those in Schedule 3) with requirements to comply with new provisions inserted in the Patents Act by Part 7 of Schedule 2 to the Act. This includes new section 229, which enables the Commissioner of Patents to issue an instrument determining formality requirements. It also enables patent specifications to use graphics and/or photographs to describe inventions. 

• Part 8 amends the Trade Marks Regulations to allow applicants that are granted an extension of time for acceptance of a trade mark to submit a request for deferral of acceptance during that extended period. 

• Part 9 amends the Designs Regulations to replace the requirement to file five copies of design representations with a requirement that at least one of each representation of the design be filed. 

• Part 10 amends the Trade Marks Regulations to reinstate the procedures for conducting an opposition to amendments made to a registered trade mark to overcome an inconsistency with international agreements. It also includes a small number of references that were inadvertently missed in the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) relating to trade mark oppositions. 

• Part 11 amends the PBR Regulations to transfer the powers of the Secretary of the Department of Industry, Innovation and Science to the Registrar of PBR. 

• Part 12 amends the Trade Marks Regulation to repeal the definition of Norfolk Island in Part 13 of the Trade Marks Regulations, as the reference is no longer correct. 

• Part 13 sets out how the amendments in Schedules 1 and 2 to the Regulations will apply in certain circumstances; and saves the operation of any repealed provisions, as necessary.