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Australia - United States Free Trade Agreement
Examining the Impact on Intellectual Property
This fact sheet highlights the impact of the
Australia/United States Free Trade Agreement (AUSFTA)
on the Australian intellectual property (IP) regime. While
IP Australia’s focus is on patents, trade marks, designs
and plant breeder’s rights (PBR), changes to other areas
of IP are mentioned as well to provide a more
comprehensive picture.
Background to the Agreement
The AUSFTA is a major bilateral trade agreement for
Australia which was signed by Australia’s Minister for
Trade and the United States Trade Representative on
18 May 2004.
The text in the Agreement was negotiated after
extensive consultation with government and nongovernment
organisations, business and professional
groups and the general public. In November 2002, the
Department of Foreign Affairs and Trade invited public
submissions. Some 200 submissions were received and
considered during the negotiation.
Legislation giving effect to the obligations under the
Agreement was passed by Parliament. On 17 November
2004, Australia and the US exchanged notes accepting
each other’s implementation processes. The Agreement
came into force on 1 January 2005.
AUSFTA and intellectual property
IP is covered in Chapter 17 of the AUSFTA. This is the
longest chapter in the Agreement, reflecting the
importance of a strong and effective IP protection
regime to both countries.
The subject matter covered in the chapter includes:
- copyright;
- trade marks;
- domain names;
- designs;
- patents;
- regulated products; and
- IP enforcement.
The Agreement provides Australia with the flexibility to implement the Agreement in a way that reflects
Australia’s interests and our legal and regulatory environment.
Legislative changes under the AUSFTA
The US Free Trade Agreement Implementation Act 2004
was passed by the Australian Parliament on 13 August
2004 and received Royal Assent on 16 August 2004. The
Act has ten schedules, five of which relate to the
changes required under the IP chapter of the
Agreement.
Little legislative change was required to the legislation
administered by IP Australia as most of the AUSFTA
provisions reflect current practices or restate existing
international obligations.
Of the legislation for which IP Australia is responsible,
only the patents legislation required amendment to
ensure it is consistent with the FTA. This change is
reflected in Schedule 8: Patents of the implementing
legislation.
The grounds for revocation in the Patents Act were
broader than the grounds on which a patent could be
refused. Amendments extended the grounds upon
which the grant of a patent can be refused to include
the invention not being useful, or being secretly used.
This means that patents can continue to be revoked on
these grounds.
The Trade Marks Office will take on additional functions
in relation to assisting the Australian Wine and Brandy
Corporation (AWBC) determine geographical indications
for wine. These changes are reflected in amendments
to the Australian Wine and Brandy Corporation Act
(AWBC Act) in Schedule 3: Australian Geographical
Indications (GI’s) for Wine of the implementing
legislation. The amendments to the AWBC Act:
- allow the owner of a trade mark to object to the determination of an Australian GI; and
- introduced procedures to allow for a GI to be cancelled.
As well, administrative guidelines have been prepared
for registration and cancellation of GIs of foreign
countries. These guidelines can be accessed at www.awbc.com.au.
Besides the legislative changes in Schedule 3 and 8
relating to protection of trade marks, geographical
indications and patents, the other legislative changes
relating to the IP chapter of the FTA included:
Schedule 2: Agriculture and Veterinary Chemicals
There will be no changes to the existing data protection
regime for pharmaceutical products, only to that for
agricultural and veterinary chemicals.
The reforms introduced measures that were part of a
suite of domestic reforms already agreed by Australian
stakeholders prior to the negotiation of the AUSFTA.
These changes boosted existing data protection
provisions to stimulate innovation in agricultural
chemistry in support of Australian agriculture and to
increase the transparency of decision-making.
Schedule 7: Therapeutic Goods
Applicants seeking to include goods (other than
therapeutic devices and medical devices) in the
Australian Register of Therapeutic Goods will now have
to provide one of two certificates. They must either:
- certify that they do not propose to market the therapeutic good in a way that would infringe a
patent; or
- certify that they propose to market therapeutic goods while a relevant patent is in force and
have notified the patent owner of their application.
The requirement to notify a patent owner will only be
required if the generic company intends to market a
product during the term of the patent and it is merely a
notification requirement. This does not give the
pharmaceutical company that owns the patent any
additional rights.
Schedule 9: Copyright
The major changes resulting from the IP chapter of the
agreement were made to Copyright legislation. These changes included:
- new rights, both economic and moral for performers in sound recordings;
- extension of the term of protection for most copyright material by 20 years;
- implementation of a scheme for limitation of remedies available against Carriage Service
Providers for copyright infringement;
- wider criminal provisions for copyright infringement;
- broader protection for electronic rights management; and
- protection against a wider range of unauthorised reproductions.
Who can help?
For more information on the AUSFTA in relation to
patents, trade marks, designs and PBR, contact
IP Australia by calling 1300 65 10 10 or (02) 6283 2999,
or visit the website www.ipaustralia.gov.au.
For general information on the AUSFTA, visit the
website Department of
Foreign Affairs and Trade.
Further information relating to agriculture and
veterinary chemicals may be found on the Department
of Agriculture, Fisheries and Forestry website.
Information relating to therapeutic goods may be found
on the Department of Health and Aging website
or www.tga.gov.au.
Information relating to copyright issues may be found
on the Attorney-General’s Department website.
Information relating to geographical indications for
wine may be found on the Australian Wine and Brandy
Corporation website .
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