Several intellectual property (IP) matters arising from Productivity Commission report on IP arrangements

Overview

Overview of consultation

From 30 August to 17 November 2017, IP Australia sought public comment on five IP policy matters. Four of these formed part of IP Australia’s proposed implementation of the Government’s response to the Productivity Commission’s 2016 report on Australia’s IP arrangements (PC report), and one relates to a trade marks issue. For ease of access, the papers are available individually at the links below, and as a single document here.

Overview of IP Legislation

The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 (the Act) received Royal Assent on 26 February 2020.

The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Regulations 2020 (2020 Regulations) were registered on the Federal Register of Legislation on 3 April 2020.  

The Act amended the Designs Act 2003 (Designs Act), Patents Act 1990 (Patents Act) and Trade Marks Act 1995 (Trade Marks Act) and began the process of phasing out the innovation patent system. 

In 2017 and 2018 IP Australia held several consultations for the measures and exposure drafts of the Bill and regulations.

Early in 2019, IP Australia sought public comment on the exposure draft of regulations to amend the Trade Marks Regulations 1995 to allow division of International Registrations Designating Australia (“division of IRDAs”). That consultation is detailed here.

Consultation on proposed reforms to Australia’s IP arrangements

Thank you to all who provided submissions to our consultation from 30 August to 17 November 2017 on the proposed reforms to Australia’s intellectual property (IP) arrangements.

You can read IP Australia’s response to this consultation which details further changes, other outcomes and reasoning.

We received 18 non-confidential submissions.

Paper 1: Amending inventive step requirements for Australian patents

This paper discusses the proposed implementation of the Government’s response to recommendations 7.2 and 7.3 of the PC report. The PC recommended that IP Australia further align the inventive step standard with that of the European Patent Office. This will be done by raising the inventiveness threshold and introducing a requirement for applicants to disclose the technical feature of their invention.

The Government supported these recommendations, and the paper puts forward options for changes to the Patents Act 1990, and the guidance that would be included in the explanatory materials accompanying the changes.

public_consultation_amending_the_inventive_step_requirement.pdf

Paper 2: Introduce an objects clause into the Patents Act 1990

This paper discusses the proposed implementation of the Government’s response to recommendation 7.1 of the PC report. The Government’s response supports the PC recommendation that an objects clause be introduced into the Patents Act 1990.

An objects clause provides additional clarity and guidance to the community on the purpose of legislation, assists the courts in interpreting the legislation, and can be used to resolve uncertainty and ambiguity. This paper discusses options for the precise wording of an objects clause to set out the purpose of the patents legislation.

public_consultation_introducing_an_objects_clause_into_the_patents_act.pdf

Papers 3 & 4: Amending the provisions for Crown use of patents and designs; and amending the provisions for compulsory licensing of patents

In its response to the PC report, the Government highlighted that in addition to an objects clause, it would also consult on recommendations made by the PC in its 2013 Report, Compulsory Licensing of Patents. These recommendations are intended to ensure that the Crown use and compulsory licensing provisions are working as intended.

Paper 3 discusses options for reform of Crown use provisions for patents and designs. The PC considered that the current provisions were unclear on the purposes for which Crown use may be invoked, and did not sufficiently provide for transparency and accountability in the use of those provisions. Options for reform include clarifying the purposes for which Crown use can be invoked, and introducing a ministerial oversight process and remuneration standard.

Paper 4 discusses options for the reform of compulsory licensing provisions for patents. The PC considered that there was uncertainty as to how the current provisions applied. Options for reform include changing the statutory test and remuneration standard for the grant of a compulsory licence. Paper 4 also discusses proposed changes to address an issue raised by stakeholders concerning compulsory licences and dependent patent inventions.

public_consultation_crown_use_of_patents_and_designs.pdf

public_consultation_compulsory_licensing_of_patents.pdf

Paper 5: Introducing divisional applications for international trade marks

This paper discusses the introduction of divisional trade mark applications (divisionals) for International Registrations Designating Australia (IRDAs) filed under the Madrid Protocol. Divisional applications for trade marks are currently available under Australian legislation, but only for applications made directly to IP Australia and not for IRDAs.

The paper also discusses consequential proposals to harmonise and amend the existing practice in Australia for dividing domestic trade mark applications to align with the new IRDA divisional procedures.

While these proposals are not related to the PC report, IP Australia considers them high-priority for implementation in 2018.

public_consultation_trade_mark_divisional_applications.pdf