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What's new archived - 2006

IP Australia working to provide better access to Australian patent data
Information and Updates on Free Trade Agreements
New Fees and Costs come into effect 1 March 2007
Doug Waterhouse elected as UPOV President for 2006-9
Development Of The Madrid System – Request For Comment On The Operation Of The Madrid Protocol
Trade Marks - Clarification of practice in relation to the 'retailing or wholesaling of utilities'
IP Australia's state office relocations
Government Response - Review of Crown Use Provisions for Patents and Designs
Overview of Responses to the Public Consultation Paper on the ACIP Report on Patents and Experimental Use
IP Australia to host “Trading Ideas”
Trade Marks Amendment Bill 2006 - Royal Assent
Addition of new terms to the ATMOSS Goods & Services search and to the Trade Marks Online Application Form picklist of goods and services
Amendments to the Trade Marks Regulations 1995 - consultation paper
Enhancements to AU Designs Data Searching (ADDS)
Changes to Part 17A of the Trade Marks Regulations
Intellectual Property Laws Amendment Act 2006—consultation papers on new provisions for the Offices not being open for business and the proposed new system for accessing trade marks documents
ATMOSS changes re Trade Mark Oppositions
Towards a stronger Trade Mark system
Intellectual Property Laws Amendment Bill 2006
IP Australia Strikes Gold at Quality Awards
Fee Review
Australia's Favourite Trade Mark is...
ATMOSS Upgrade for "Goods/Services"
Consultation Paper on the PCT Regulation Changes to come into effect on 1 April 2007
New Plant Breeder's Rights Advisory Committee
Intellectual Property Online to Victorian Small Business
Consultation Papers on Changes to Patent and Trade Marks Attorney Regimes
Intellectual Property Laws Amendment Bill 2006
Australia’s favourite trade mark: which is it?
Consultation Paper on the ACIP Report on Patents and Experimental Use
Decision on Ugg Trade Mark Non-Use Action
IP Australia Virtual Tour
Review of Innovation Patent System
IP Crime and Enforcement Research
New WIPO Executive Program
Professional Standards Board: New Appointments
Trade Marks Centenary - Australia celebrates 100 years of trade marks: which is your favourite?
Bob Baldwin to launch Trade Marks Centenary
Protecting intellectual property in China seminar
Review of Designs Spare Parts Provision
Trade Marks Amendment Bill 2006
Addition of goods and services terms to Trade Mark pick-list
Electronically Fillable PBR Forms Now Available
Sydney Patent Microfiche collection moved
Appointment of Disciplinary Tribunal
Trade Mark Invoice Scam Warning for Business
IP Media Centre and Journalists’ Guide to IP launched
Addition of terms to Trade Mark pick-list
IP Australia's Position Paper on the Search Results Disclosure Regime provided under subsection 45(3) of the Patents Act 1990
ACIP review of the relationship between trade marks and business names, company names and domain names
New Website: Understanding Plant Breeder's Rights
Attorney-General's Review of Personal Properties Security
Beating Business Name Confusion
Intellectual Property Laws Amendment Bill 2006
IP Australia Presents at LESANZ Conference
Improvements to ATMOSS and Trade Mark e-forms
Minister urges small businesses to protect their intellectual property
IP Australia Now Accepts Payment via American Express (AMEX)
Delay in publication of IPC7 to IPC8 reclassified data.
Improvements to the AU Published Data Searching (APPS)
Consultation Paper - Access to Trade Mark Documents
Temporary Disruption to IP Australia's Financial Accounting System - 25-30 January 2006.
Patents Office change of format of Volume 2 and Volume 3 of the Manual of Practice and Procedure

21 December 2006
IP Australia working to provide better access to Australian patent data

IP Australia has initiated a program to provide better access to patent data for inventors, researchers and IP professionals in Australia and around the world. The Patent Search Strategy Project will deliver a new and improved search facility that will ultimately provide electronic access to all Australian patent data.

More information on the project can be found here.

A mailing list has been created to keep interested parties informed on the progress of the project. You can sign up to the Patent Search mailing list here.

19 December 2006
Changes to Part 17A of the Trade Marks Regulations 1995 relating to:

Grounds of opposition to extension of protection to international registrations designating Australia (IRDAs)
Applications for cessation of protection of protected international trade marks (PITMs)

Part 1 of Schedule 1 to the Trade Marks Amendment Act 2006 (the Amendment Act) commenced on 23 October 2006. The Trade Marks Amendment Regulations 2006 (No. 1) were made on 13 December 2006. With effect from 19 December 2006, those amending regulations made consequential amendments to Part 17A of the Trade Marks Regulations 1995. These amendments are to make sure that some amendments made by Part 1 of Schedule 1 to the Amendment Act apply appropriately to trade marks governed by Part 17A of the Trade Marks Regulations—i.e. to IRDAs and PITMs.

For more information see the official notice

18 December 2006
Information and Updates on Free Trade Agreements

Australia seeks to have comprehensive FTAs which are consistent with Australia's WTO commitments and objectives and deliver economic benefits in a reasonable time-frame. A comprehensive FTA includes a chapter on IP. IP Australia is involved in all FTA negotiations and welcomes comments from interested parties.

For information on all existing FTAs and FTAs under negotiation or consideration please use the websites http://www.dfat.gov.au/trade/ and/or http://www.fta.gov.au/

Australia-Japan Free Trade Agreement Negotiations

Prime Minister John Howard and the Japanese Prime Minister Shinzo Abe have agreed to commence Free Trade Agreement negotiations early in 2007.

The Department of Foreign Affairs and Trade (DFAT) would welcome submissions from individuals and groups on issues relevant to the negotiation of an FTA with Japan by 15 January 2007. Details are at: http://www.dfat.gov.au/geo/japan/fta/index.html

Recent media releases regarding new FTA actions

Chile - http://www.trademinister.gov.au/releases/2006/wtt027_06.html

Korea - http://www.trademinister.gov.au/releases/2006/wtt026_06.html

Gulf Cooperation Council - The GCC comprises Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE. http://www.trademinister.gov.au/releases/2006/wtt029_06.html

14 December 2006
New Fees and Costs come into effect 1 March 2007

Changes to IP Australia's fees and costs under the Designs, Patents, Plant Breeder’s Rights and Trade Marks Acts will come into effect on Thursday 1 March 2007.

The new fees:

• Implement a recent comprehensive fee review conducted by IP Australia as part of IP Australia’s Cost Recovery Impact Statement;
• Provide some simplification and consistency across the fee schedules;
• Update cost items (relating to instances where costs may be awarded to a party by the Commissioner or Registrar) to what is now considered reasonable;
• Continue to implement a 'whole of life' cost recovery fee structure while realigning some costs with fees to ensure that IP Australia continues to provide high quality products and services; and
• Maintain the on-going viability of IP Australia while keeping the prices of services internationally comparable.

For more information about the fee changes view the Official Notice or contact our Customer Support Centre on 1300 651 010.

4 December 2006
Doug Waterhouse elected as UPOV President for 2006-9

The International Union for the Protection of New Varieties of Plants (UPOV) recently appointed Doug Waterhouse, Registrar of the Australian Plant Breeder’s Rights scheme, as President of the 62 member council. The Presidency is a first for Australia in the intellectual property arena and represents significant international recognition of the lead role Australia continues to play in UPOV.

The Media Release can be found at our IP Media Centre.

23 November 2006
Development Of The Madrid System – Request For Comment On The Operation Of The Madrid Protocol

The Trade Marks Office (TMO) is seeking comment from trade mark owners and their representatives on the operation of the Madrid Protocol in the context of international consideration of the future development of the Madrid system.

It would be helpful if comments could reach the TMO before Christmas as the next meeting of the WIPO Working Group on the Legal Development of the Madrid System will take place at the end of January 2007. However, as it is envisaged that the international discussions will be ongoing, input at a later time would also be very useful.

Email comments may be sent to: Shirley.Harris@ipaustralia.gov.au and Barbara.Bennett@ipaustralia.gov.au

There will also be opportunities for further comment as the international process continues.

Request For Comment On The Operation Of The Madrid Protocol

21 November 2006
Trade Marks - Clarification of practice in relation to the 'retailing or wholesaling of utilities'

The retailing and/or wholesaling of utilities includes the retailing and/or wholesaling of electricity, energy, gas supply, water supply, telecommunications network access and the like. These types of claims have been regularly made by applicants in class 35, where general retailing and wholesaling services fall.

Advice received by IP Australia from the World Intellectual Property Organisation has stated that these types of claims do not fall under the definition of retailing and wholesaling services in class 35 (the bringing together of a variety of goods enabling customers to conveniently view and purchase those goods, excluding the transport thereof). Class 39 (as the provision of electricity, energy, gas supply, water supply etc) and class 38 (as the provision of telecommunications network access etc) were deemed to be more appropriate for these services.

In light of this advice, applications containing these claims will not be accepted in class 35 and owners will need to agree to transfer to class 38 or 39 as appropriate.

Retrospective changes will not be made to existing trade mark registrations in class 35.

If you have any questions in regards to these changes, please contact Chrissie Norman on (02) 6283 2695 or chrissie.norman@ipaustralia.gov.au

The Official Notice will also be published in the Australian Official Journal of Trade Marks on 21 November 2006.

20 November 2006
IP Australia's state office relocations.

The NSW and SA/NT State offices of IP Australia will be moving to new premises. The NSW state office will be relocated on Monday 27 November 2006 and the SA/NT state office will be relocated on Monday 4 December 2006.

NSW new address will be:
Level 1, Bay 8
Locomotive Workshop
Eveleigh NSW 1430

SA/NT new address will be:
Innovation House East Wing
Technology Park
Mawson Lakes Boulevard
Mawson Lakes SA 5095

For more information, view the Official Notice.

15 November 2006
Government Response - Review of Crown Use Provisions for Patents and Designs

The former Federal Industry Parliamentary Secretary, the Hon Warren Entsch MP, released the report, Review of Crown Use Provisions for Patents and Designs by the Advisory Council on Intellectual Property (ACIP) on 7 December 2005.

ACIP recommended that a more transparent and accountable process for utilising the Crown use provisions be introduced including the requirements for the Crown to seek prior consent from the patent or design owner and to seek Ministerial approval before invoking the provisions. ACIP also recommended introducing a remuneration standard and a process to facilitate an agreed remuneration for the patent or design owner.

The ACIP recommendations continue to ensure the Crown use provisions are readily accessible by Australian governments, and they propose the introduction of safeguards to prevent these powers from being used inappropriately.

IP Australia is undertaking consultations with relevant Australian Government departments and key non-government stakeholders to assist in informing the Australian Government’s response to the Review’s findings.

Other interested parties may also make their views known on the Review’s findings by emailing robert.redfern@ipaustralia.gov.au by 22 December 2006.

A copy of the report is available at www.acip.gov.au.

8 November 2006
Overview of Responses to the Public Consultation Paper on the ACIP Report on Patents and Experimental Use

On 4 September 2006, IP Australia (on behalf of the Inter-departmental Committee) released a consultation paper on the ACIP Report on Patents and Experimental Use. The consultation paper invited interested parties to comment on four questions, directed at seeking the appropriateness of ACIP’s recommendation 1 and ALRC’s recommendation 13-1, and whether the interested party’s industry had been impacted by the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval. A number of submissions were received in response to the consultation paper. A paper summarising the submissions is provided below.

If you have any inquiries please contact Mr Anthony Murfett at anthony.murfett@ipaustralia.gov.au.

Overview of Responses to the Public Consultation Paper on the ACIP Report ‘Patents and Experimental Use’

31 October 2006
IP Australia to host “Trading Ideas”

IP Australia in collaboration with the Department of Foreign Affairs and Trade, the Department of Industry, Tourism and Resources and the Attorney General’s Department will host the Trading Ideas symposium, the first public-private event for APEC Australia 2007.

Companies looking to capitalise on their innovations and explore overseas markets, IP professionals, patent and trade mark attorneys, and in-house legal counsel will be able to increase their knowledge of the latest developments in Intellectual Property around the Asia Pacific Region at Trading Ideas, to be held in Sydney, 28 – 30 January 2007.

Australia’s Minister for Industry and Tourism, Hon. Ian MacFarlane, has issued an open invitation to the business community around the region to take part in what will be the largest IP event ever to take place in Australia.

“The program will highlight emerging IP issues, new policy direction, business case studies and issues for IP professions. In addition, it will provide a forum to explore future IP directions in the Region.”

Speakers at the symposium include the Deputy Director of the World Intellectual Property Organization (WIPO), Dr Francis Gurry, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Mr Jon Dudas, and the President Elect of the European Patent Office, Ms Alison Brimelow. Delegates can register at www.tradingideas.org where the full program is also featured.

For more information contact Matthew Forno, International Cooperation, IP Australia on (02) 6283 2500 or via info@tradingideas.org.

24 October 2006
Trade Marks Amendment Bill 2006 - Royal Assent

The Trade Marks Amendment Bill 2006, received the Royal Assent on 23 October 2006. Different provisions of the Trade Marks Amendment Act 2006 will commence at different times, as detailed in the Official Notice.

18 October 2006
Addition of new terms to the ATMOSS Goods & Services search and to the Trade Marks Online Application Form picklist of goods and services

Trade mark applications contain specifications of Goods and Services ("goods"). While in the main, these goods are classified using the Nice Classification listing, the Office also makes determinations, where required. These determinations will be listed via the Goods & Services search function on the ATMOSS database.

In addition, applicant's using the on-line application e-form will be able to select these determinations from the pick-list of goods and services.

Further information about these changes can be found in the following Official Notice. The Notice will also be published in the Australian Official Journal of Trade Marks on 2 November 2006.

Addition of new terms to the ATMOSS Goods & Services search and to the Trade Marks Online Application Form picklist of goods and services

18 October 2006
Amendments to the Trade Marks Regulations 1995 - consultation paper

Amendments are proposed to be made to the Trade Marks Regulations 1995 arising from Part 2 of Schedule 1 of the Trade Marks Amendment Bill 2006 as well as a number of other amendments that arise from the trade marks legislation review but are not dependent on the Bill. The attached paper provides an opportunity for interested parties to provide written comments by 1 November 2006 on the proposed mechanisms for implementing these amendments to the Regulations. All comments received will assist in refining IP Australia’s proposed implementation mechanisms.

Consultation Paper on Amendments to the Trade Marks Regulations 1995

18 October 2006
Enhancements to AU Designs Data Searching (ADDS)

Several changes to ADDS were introduced on 14 October 2006. While these changes do not affect the search functionality of ADDS, the following outlines the changes that are being introduced.

Table of Converted Designs
Presently, notices regarding converted designs and other matters are placed on the entry screen on ADDS. To tidy up the entry point, an additional link will take Users to the Table of Converted Designs which will reside in its own separate area.

Renewal data
The terminology of ‘In Force To’ on the Status screen will be changed to ‘Renewed To’. This enhancement has been introduced to allow Users of the Designs system to clearly recognise when Renewal Fees are due.

Users with Firefox systems
Users with Firefox systems that are accessing the Advanced Search facility of ADDS have been presented with a range of errors given incompatibility with systems. Upgrades to ADDS has rectified this problem.

Enquiries to Sharon Thomas, Trade Marks and Designs on (02) 6283 2582 or by e-mail to : sharon.thomas@ipaustralia.gov.au

This Notice will also appear in the Australian Official Journal of Designs on 26 October 2006.

17 October 2006
Changes to Part 17A of the Trade Marks Regulations

The Trade Marks Amendment Bill is expected to receive Royal Assent and come into force in the next couple of weeks. It is proposed that amendments to Part 17A of the Regulations be made to ensure that certain amendments proposed in Part 1 of Schedule 1 of the Bill will apply appropriately to international trade mark registration in Australia. The attached paper sets out the changes to Part 17A being proposed. Interested parties may provide comments on these changes by 27 October 2006. Further regulations will also need to be made to implement the amendments in Part 2 of Schedule 1 of the Bill. IP Australia will consult the public separately on those changes.

Consultation Paper on Changes to Part 17A of the Trade Marks Regulations 1995

17 October 2006
Intellectual Property Laws Amendment Act 2006—consultation papers on new provisions for the Offices not being open for business and the proposed new system for accessing trade marks documents

On 27 September 2006, the Intellectual Property Laws Amendment Act 2006 (Amendment Act) received the Royal Assent.

Schedule 4 to the Amendment Act will amend the Trade Marks Act 1995 to make prescribed documents relating to trade marks available for public inspection at an early stage in the trade mark application process.

Schedule 12 to the Amendment Act will amend the Designs Act 2003, the Olympic Insignia Protection Act 1987, the Patents Act 1990, the Plant Breeder’s Rights Act 1994, and the Trade Marks Act 1995 to clarify the effect of the Designs Office, the Patent Office, the Plant Breeder’s Rights Office and the Trade Marks Office, and any of their State sub-offices, not being open for business.

These schedules will commence before the end of March 2007. Regulations are required to implement the new arrangements. Accordingly, before that date the implementing regulations must be made and registered in the Federal Register of Legislative Instruments.

IP Australia invites written comments and suggestions on the proposals in the attached consultation papers, including your responses to questions in the papers by the end of 27 October 2006.

Consultation Paper - New close down provisions

ConsultationPaper - New System for Accessing Trade Mark Documents

12 October 2006
ATMOSS changes re Trade Mark Oppositions

The Trade Mark Laws Amendment Bill was passed by Parliament on 12 October 2006. Once it has received Royal Assent there will be changes to the grounds on which trade mark registration can be opposed. As a result, the Australian Trade Mark On-line Search System (ATMOSS) has been updated to include a new field in the status screen to show the date the application was accepted. This is in addition to the field showing the date acceptance was advertised.

If you are contemplating filing a notice of opposition after the legislation has received Royal Assent it is important to know the date on which the trade mark application was accepted as that is the date which will determine whether the new grounds of opposition can be relied on. Please note it is the date of advertisement which starts the statutory 3 month period in which a Notice of Opposition may be filed. There may be a discrepancy of several months between the two dates.

Further information about allowable opposition grounds is contained in the official forms for a Notice of Opposition (form TM/00/003 for opposition to registration of a national trade mark or form TM/00/020 for opposition to registration of an international trade mark). These forms are available via the resources section on the IPAustralia web site here and will be updated once the date of Royal Assent is known.

Enquiries to Gavin Lovie, A/g Deputy Registrar of Trade Marks and Designs on (02) 6283 2208 or by e-mail to : gavin.lovie@ipaustralia.gov.au

This Notice will also appear in the Australian Official Journal of Trade Marks on 26 October 2006.

12 October 2006
Towards a stronger Trade Mark System

The Trade Marks Amendment Bill 2006 was passed in Parliament today (12/10/06), making a number of incremental improvements to the Trade Marks Act 1995 that will strengthen the Trade Marks system and provide greater certainty for Australians and Australian business. For more information view the media release or the Official notice

28 September 2006
Intellectual Property Laws Amendment Bill 2006

The Intellectual Property Laws Amendment Bill 2006, which amends several pieces of intellectual property (IP) legislation, received the Royal Assent on 27 September 2006. Different provisions of the Intellectual Property Laws Amendment Act 2006 will commence at different times, as detailed in the Official Notice.

27 September 2006
IP Australia Strikes Gold at Quality Awards

IP Australia took top honours at the prestigious 2006 Australia Organisation for Quality (AOQ) ACT/NSW State Awards at a gala evening held at the Sydney Hilton Hotel last night.

Find out more

26 September 2006
Fee Review

IP Australia has completed a review of its fees and charges consistent with Australian Government cost recovery policy (costs, expenses and allowances have also been reviewed). The following tables provide the draft changes which IP Australia is seeking to introduce through amendments to regulations, for a target implementation date of February 2007 (the date will be confirmed as part of an upcoming approval process).

Designs Costs Changes

Designs Fees Changes

Patents Costs Changes

Patents Fees Changes

Plant Breeder's Fees Changes

Trade Marks Costs Changes

Trade Marks Fees Changes

IP Australia welcomes customer feedback on the proposed changes. You can comment on the proposed fee changes by e-mailing us via the following link fees@ipaustralia.gov.au. IP Australia will compile general information in response to queries/comments which are received prior to 25 October 2006.

25 September 2006
Australia's Favourite Trade Mark is...

Parliamentary Secretary to the Minister for Industry, Tourism and Resources, the Hon Bob Baldwin, made the announcement at a public event in Sydney as part of the Centenary of Trade Marks celebrations.

To find out Australia's favourite trade mark, click here

25 September 2006
Software upgrade for trade mark search tools in ATMOSS

On the evening of Saturday 23 September, the ATMOSS Goods and Services search engine and the Device Constituent search engine underwent a software upgrade. From the users point of view, the changes are mainly superficial and relate to the way the search results are presented.

Display of search results
The frontpage (where the search term is entered) has remained the same and the search engine will search the same lists/content, but the way the search results are displayed has changed. Instead of presenting all the goods and services in one table, the search engine now provides lists grouped by class number.

Complete listing for each class
Once a search has been completed and has returned a list of hits, clicking on the class number (eg Class 05) will show a full list of everything recorded in that class. The search term in question will be highlighted in the class list.

Did you mean...?
The upgrade includes a 'did you mean...' facility for misspellings or words that cannot be found. Currently, this facility includes references to similar terms only. For example, if the word 'dug' is searched instead of 'dog', the search engine will give you a nil result and will ask 'did you mean: DOG?'. It won't, however, ask 'did you mean: CANINE?'

Using the *
Both the goods/services and the device constituent search engines require the use of an asterix (*) at the end of a term to perform a part word search. For example, a search for DOG will only bring exact hits for the word DOG (ie will not return hits for items such as 'leashes for dogs'), whilst a search for DOG* will do a part word search (ie will return hits for DOG and DOGS).

Any questions or suggestions in relation to this upgrade should be directed to Chrissie Norman on 02 6283 2695 or chrissie.norman@ipaustralia.gov.au.

20 September 2006
Consultation Paper on the PCT Regulation Changes to come into effect on 1 April 2007

Amendments to the Regulations under the Patent Cooperation Treaty (PCT) (‘the PCT Rules’) are due to come into force on 1 April 2007. The more significant amendments address the situation where a PCT application is filed with missing elements or parts; restoration of priority where an interntaional application is filed up to two months after the end of the 12 month priority period; rectification of obvious mistakes; and addition of Korean patent documents to the minimum documentation to be searched. The attached consultation paper presents a brief overview of those amendments. It also provides an opportunity for interested parties to provide written comments by 19 October 2006 on the proposed mechanisms for implementing these amendments to the PCT Rules. All comments received will assist in refining IP Australia’s proposed implementation mechanisms.

Consultation Paper on the 2007 PCT Regulation Changes

20 September 2006
New Plant Breeder's Rights Advisory Committee

The Hon Ian Macfarlane, Minister for Industry, Tourism and Resources has appointed the new members to the Plant Breeder's Rights Advisory Committee (PBRAC).

The Official Notice is available.

18 September 2006
Intellectual Property Online to Victorian Small Business

Victorian small business operators now have better access to valuable intellectual property information following an agreement signed by IP Australia and the Victorian Office of Small Business (OSB).

A Media Release is now available.

18 September 2006
Consultation Papers on Changes to Patent and Trade Marks Attorney Regimes

In October 2005, the Government issued its responses to the Review of the Regulatory Regime for Patent and Trade Marks Attorneys and the Review of the Discipline Regime for Patent and Trade Marks Attorneys produced by the Professional Standards Board for Patent and Trade Marks Attorneys. The Reviews and the Government responses were produced following wide consultation.

IP Australia has the responsibility for implementing the Government responses and has produced two papers:

Regulatory Regime Consultation Paper

Discipline Regime Consultation Paper

These papers set out the proposed changes to the regulatory and disciplinary regimes which address the Government’s response.

IP Australia invites written comments on the proposed changes. In addition, IP Australia invites suggestions on the transitional provisions that should apply. Particular concerns surround the impact the proposed changes will have on pre-registration employment for prospective patent attorneys and recognition of earlier technical qualifications. Comment is also sought on conditions that might be imposed by the Disciplinary Tribunal when reprimanding or suspending an attorney, and the proposed wording to define suitable academic qualifications for registration as a patent attorney.

Please send written comments and suggestions by 9 October 2006 to:

Greg Powell
Project Manager – Attorney Review Implementation
IP Australia
PO Box 200
WODEN ACT 2606

Comments may also be sent by e-mail to Greg.Powell@ipaustralia.gov.au or by fax to (02) 6281 7247.

14 September 2006
Intellectual Property Laws Amendment Bill 2006

The Intellectual Property Laws Amendment Bill 2006, which amends several pieces of intellectual property (IP) legislation, was passed in Parliament today.

A Media Release and the Official Notice is now available.

6 September 2006
Australia’s favourite trade mark: which is it?

The time to reveal Australia’s favourite trade mark is drawing near with a new date of Monday 25 September set for the announcement.

For more information on trade marks visit the Trade Mark's Centenary website.

The media release is available on the IP Media Centre.

4 September 2006
Consultation Paper on the ACIP Report on Patents and Experimental Use

On 9 November 2005, the Hon Warren Entsch MP, released the Advisory Council on Intellectual Property (ACIP) Report on Patents and Experimental Use. Essentially the ACIP Report recommends that the Patents Act 1990 should be amended to include an exemption from patent infringement for experimental purposes relating to the subject matter of the invention. Recommendation 5 also suggests that the Government should consider reviewing the impact on Australian industry of the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval.

An Interdepartmental Committee (IDC) has been established to draft a response to the ACIP Report for consideration by the Government. As the recommendations in the ACIP Report differ slightly to the options proposed in the ACIP Patents and Experimental Use Option Paper (published December 2004), the IDC has developed a public consultation paper which provides a brief overview of the ACIP Report and its recommendations. The consultation paper also invites interested parties to submit comments on the questions contained on page 9 of the paper. The submissions received will be used to assist in developing the government response.

Written comments on the questions contained in the consultation paper and any other matters relating to the inclusion of an experimental use provision in the Patents Act are invited by 29 September 2006.

Consultation Paper on the ACIP Report on Patents and Experimental Use

ACIP Report on Patents and Experimental Use

23 August 2006
Decision on Ugg Trade Mark Non-Use Action

The Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin, clarified today that trade mark applicants are able to incorporate the word Ugh or Ugg in trade mark applications if they wish but should take care not to infringe other's rights.

The media release is available at the IP Media Centre

22 August 2006
IP Australia Virtual Tour

IP Australia has launched a new resource, the Virtual Tour. The IP Australia Virtual Tour provides a unique and interactive way for you to explore the who, what and where of IP Australia.

The Virtual Tour contains information about IP Australia and focuses on key features of the organisation and its surroundings with case studies profiling real staff.

Visit the website and take the Virtual Tour of IP Australia.

15 August 2006
Review of Innovation Patent System

The Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin today released the report on the Review of Innovation Patent System. The review has found the system meets its objectives and that changes are not warranted at this time.

The Media Release and Report are now available.

21 July 2006
IP Crime and Enforcement Research

The Australian Institute of Criminology (AIC), Australia's pre-eminent national crime and criminal justice research agency, is currently conducting a study in relation to intellectual property crime and enforcement in Australia. As part of this research, the AIC is collecting data on the extent to which intellectual property (IP) crime exists and its impact. The research will identify options for the Federal Government's response to piracy and counterfeiting in the future.

If you wish to assist in this research by providing your informed views on the type, amount and impact of IP crime in Australia, we invite you to contact Alex Malik a consultant researcher with the AIC by August 4, 2006, at alex.malik@aic.gov.au   In your note, please tell us about yourself and your organisation, and explain why you believe you may be able to contribute to this research.

More information is available in the AIC Research Proposal.

Thank you for considering taking part in this important national project.

19 July 2006
New WIPO Executive Program

The Worldwide Academy of the World Intellectual Property Organization (WIPO) is now receiving applications for places on its new Executive Program - Strategic Intellectual Property Management - which will take place at the headquarters of WIPO in Geneva, on September 18 and 19, 2006.

The program is intended to contribute to professional development needs in a wide range of businesses. Designed for senior executives, the two-day program will examine proactive management of IP assets in the global market place. Sessions conducted by contemporary leaders and practitioners will provide valuable insight on innovation, strategy and sustaining competitive advantage in the knowledge economy.

Further information is available on the WIPO website

12 July 2006
Professional Standards Board: New Appointments

The Minister for Industry, Tourism and Resources has appointed Ms Julie Ballance, a patent attorney from New Zealand, and Mr David Webber, a patent attorney from Victoria, to the Professional Standards Board for Patent and Trade Marks Attorneys. The date of appointment for both new members is 23 June 2006. They have been appointed for a period of three years from that date.

The appointment of these new members has particular significance - recognising the importance of the New Zealand practitioners registered in Australia under the Trans Tasman Mutual Recognition Arrangement, as well as the development of closer cooperation with New Zealand in patent matters. Mr Webber's appointment is significant as he brings particular expertise to the Board in IT - one of the more difficult areas in assessment of suitable qualifications.

3 July 2006
Trade Marks' Centenary - Australia celebrates 100 years of trade marks: which is your favourite?

Trade marks are important to Australia economically and socially. We connect with brands at a personal level and associate them with moments in our own lives. The character of our country, our innovation and creativity can be reflected in many trade marks. Good trade marks also make products successful and add to Australia’s prosperity.

Sunday 2 July 2006 is the 100th anniversary of the first federally registered trade mark. Celebrations to mark this event start on Monday 3 July 2006. As part of the celebrations, Australians are being asked to vote for their favourite mark.

Members of the business and industry community have nominated 40 of Australia’s most prominent trade marks for consideration as the most popular.

A panel of eminent Australians including advertising guru Siimon Reynolds, artist and entrepreneur, Ken Done, footballer, businessman and philanthropist, George Gregan, and businesswoman and fashion designer, Carla Zampatti, have vetted these 40 and chosen their top 10.

From this final list of 10 trade marks', all Australians can vote to nominate Australia’s favourite trade mark.

Vote for your favourite at the Trade Marks' Centenary website

The Media Kit is available at the IP Media Centre.

30 June 2006
Bob Baldwin to launch Trade Marks' Centenary

To mark the occasion of the 100th anniversary of the first federally registered trade mark, the Parliamentary Secretary to the Minister for Industry, Tourism and Resources Bob Baldwin will be launching a competition to find Australia’s favourite trade mark at the Museum of Contemporary Art in Sydney on Monday 3 July 2006.

The media release is available at the IP Media Centre.

29 June 2006
Protecting intellectual property in China seminar

If you’re looking to trade or are currently trading in China, it’s important to understand the legal framework surrounding intellectual property (IP) issues. The law alone isn’t enough to protect intellectual assets.

To help you better understand how you can protect your intellectual property, Austrade in partnership with IP Australia, are holding free seminars in all major capital cities.

The seminars will cover IP issues that all exporters, manufacturers and service providers should know about before doing business in China. You’ll receive valuable up-to-date information that can help your business factor IP into strategic and operational decisions, reducing the risk of IP theft.

A group of industry experts will discuss:

• The reality of the IP environment in China
• Practical steps you can take to protect your IP in China
• Information on what can and can’t be protected when exporting to China
• Actual case studies outlining remedies companies have undertaken.

Furthermore, a panel of experts from IP Australia, Deacons and Rouse & Co will be available to answer any questions. You’ll also have the opportunity to network and meet with practitioners in the Chinese IP sector.

To attend this seminar you’ll need to register your interest online at www.austradeevents.com.au/IPChina2 or call Austrade on 13 28 78.

Printable PDF

23 June 2006
Review of Designs Spare Parts Provision

The Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin, today released the report Review of the "Spare Parts" Provision of the Designs Act 2003.

The Media Release and Report are now available

21 June 2006
Trade Marks Amendment Bill 2006

The Trade Marks Amendment Bill 2006 was tabled in Parliament today, making a number of incremental improvements to the Trade Marks Act 1995 that will provide greater certainty for Australian business.

A Media Release is now available.

9 June 2006
Addition of goods and services terms to Trade Mark pick-list

The Trade Mark e-form filing systems, both for standard Trade Mark Applications and the Assisted Filing Service, have functionality which allows the user to select from a pick-list of goods and/or services relating to their Trade Mark. The list of terms available to select from was previously restricted to Nice classification terms plus a further number of official Office Determinations. These terms are also those which form the basis of the Goods and Services help with the Trade Mark database, ATMOSS.

Recently, the services classes (classes 35 to 45) were updated with the addition of over 5000 extra terms. As of Thursday 7 June, a number of the goods classes have been updated also (classes 2, 4, 13, 15, 18, 22-24, 26, 27 and 31-34) with the addition of over 6000 new terms. These additional terms provide a much larger number and wider range of terms available in these classes than has been the case in the past, for potential applicants.

Further work to provide additional terms in the pick-list for the remaining goods classes will be undertaken in the near future.

Enquiries or further information can be obtained from Victor Portelli, Deputy Registrar of Trade Marks on (02) 6283 2093 or by e-mail to victor.portelli@ipaustralia.gov.au

31 May 2006
Electronically Fillable PBR Forms Now Available.

As part of a comprehensive review of PBR forms, several are now available in fillable WORD format and can be completed electronically and saved. Currently, only the Part 1 Application, Supplementary Pages to Part 1 Application, Authorisation of Agent and Nomination of Qualified Person forms are available in fillable WORD.

We are endeavouring to have all forms in both fillable WORD and fillable PDF in the near future and will continue to update the list. Please check the Forms page regularly for updates.

16 May 2006
Sydney Patent Microfiche collection moved

As of Tuesday 16 May 2006 the Sydney State Office Patent Microfiche collection of Australian full text specifications (AU-A, AU-B, AU-C) 1975-1999 will be transferred to the NSW State Library.

The library is located on Macquarie Street, opposite Hunter Street. Below is a list of the Opening hours of the various areas within the library.

General opening hours

9 May 2006
Appointment of Disciplinary Tribunal

The Hon Ian Macfarlane, the Minister for Industry, Tourism and Resources, has appointed Ms Sigrid Higgins as the Patent and Trade Marks Attorneys Disciplinary Tribunal. Ms Higgins acted in the position for 12 months until March 2006, and her current appointment will extend for three years from 30 March 2006.

3 May 2006
Trade Mark Invoice Scam Warning for Business

Trade mark applicants need to beware of a scam involving invoices sent to business whose trade mark application details have been published in the Australian Official Journal of Trade Marks.

Full details about scams are available here

24 April 2006
IP Media Centre and Journalists’ Guide to IP launched

IP Australia has launched a new IP Media Centre and Journalists’ Guide to IP. The website and related booklet contains a wealth of information designed to assist journalists when reporting on intellectual property (IP). The IP Media Centre is a comprehensive resource, providing the latest media releases, news stories and information on Aussie IP.

Visit the website and/or order a copy of the booklet.

21 April 2006
Addition of terms to Trade Mark pick-list

The Trade Mark e-form filing systems, both for standard Trade Mark Applications and the Assisted Filing Service, have functionality which allows the user to select from a pick-list of goods and/or services relating to their Trade Mark. The list of terms available to select from was previously restricted to Nice classification terms plus a further number of official Office Determinations. These terms are also those which form the basis of the Goods and Services help with the Trade Mark database, ATMOSS.

As of Friday 21 April, the selection of terms available within the pick-list and the ATMOSS Goods and Services help has been increased by over 5000 terms, for services classes (Classes 35 to 45). These additional terms provide a much larger number and wider range of terms for service marks than has been the case in the past, for potential applicants.

Further work to provide additional terms in the pick-list for the goods classes (1 to 34) will be undertaken in the near future.

Enquiries or further information can be obtained from Victor Portelli, Deputy Registrar of Trade Marks on (02) 6283 2093 or by e-mail to victor.portelli@ipaustralia.gov.au

19 April 2006
IP Australia's Position Paper on the Search Results Disclosure Regime provided under subsection 45(3) of the Patents Act 1990

In February 2005, the Institute of Patent and Trade Mark Attorneys (IPTA) and the International Federation of Intellectual Property Attorneys (FICPI) contacted IP Australia in relation to difficulties members of IPTA and FICPI were having with the search results disclosure regime under subsection 45(3) of the Patents Act 1990. Specifically, practitioners raised concerns about continuing uncertainty over the operation of the search results disclosure regime. Practitioners also believed that the fee structure was onerous, often resulting in excessive fees. Representatives from IP Australia, IPTA and FICPI held discussions in July and October 2005 regarding the difficulties raised by practitioners and possible amendments to the Patents Regulations 1991 to address these issues. Subsequently, IP Australia released a discussion paper in November 2005 to stakeholders requesting submissions on these difficulties and possible solutions.

Following consideration of the 16 submissions received, IP Australia has produced the following position paper. The position paper proposes to seek amendments to the Regulations to address practitioners’ concerns. Specifically, the proposed amendments will:

• simplify the fee system for providing search results to make it simpler and less costly for most patent applicants;
• clarify the term "corresponding application" so it is possible to precisely identify the search results that must be supplied;
• require a patent applicant to provide all relevant search results for a divisional or additional patent application; and
• clarify that a patent applicant must receive a search result from a foreign patent office, or their agent, before they are required to supply a copy of that search result to the Commissioner.

IP Australia will commence seeking the necessary Regulation changes shortly. IP Australia notes that these changes will not take effect before July 2006 and all stakeholders will be advised at a later date when the changes will become effective.

If you have any inquiries please contact Anthony Murfett anthony.murfett@ipaustralia.gov.au.

Download the Position Paper

13 April 2006
ACIP review of the relationship between trade marks and business names, company names and domain names

ACIP released an issues paper and received written submissions. The Council also commissioned market research to test the level of understanding by the business community of the legal standing of business names.

Federal Industry, Tourism and Resources Parliamentary Secretary, The Hon Bob Baldwin MP, released ACIP's report on 13 April 2006. The report and media release are now available or hard copies may be obtained by contacting the ACIP secretariat jeff.roberts@ipaustralia.gov.au

13 April 2006
New Website: Understanding Plant Breeder's Rights

A new website on plant breeder’s rights (PBR) was launched by the Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin. The website contains a wealth of information designed to help improve understanding on all aspects of the Australian PBR system. It provides comprehensive information on case law, commercialisation, enforcement and the relationship of PBR to other intellectual property rights.

You can access the Understanding Plant Breeder's Rights website at www.acipa.edu.au/frame_PBR.html

1 April 2006
Attorney-General's Review of Personal Properties Security

The Standing Committee of Attorneys-General has decided, at the suggestion of the Australian Attorney-General, the Hon Philip Ruddock MP, to review the law on personal property securities. Reform of personal property security law and introduction of an on-line registry would result in a faster, simpler and more certain system for taking and registering security interests (including leases, hire purchase and retention of title arrangements) over most types of tangible and intangible personal property (including patents, trade marks, designs and plant breeder's rights).

Further information on the review, including copies of the Attorney-General's press release of 11 April 2006, an Options Paper prepared for consultation purposes, and information about the Attorney-General's seminar series on the review is available from the website of the Attorney-General's Department at www.ag.gov.au/pps.

3 April 2006
Beating Business Name Confusion

IP Australia, in conjunction with the QLD Department of Tourism, Fair Trading and Wine Industry Development, are piloting a campaign to tackle the confusion surrounding business names and trade marks.

Two postcards have been developed and it is anticipated 25,000 of each of the postcards will be distributed for a period of 6 months starting in April. The postcards highlight the risks to a business if trade marks are not considered. The postcards' call to action is to visit an explanatory website or contact IP Australia by phone.

IP Australia recently conducted some research into this area. Of the 267 QLD business names (203 registered during the month of June 2005, and 64 registered during the month of August 2005) considered, a total of 1.9% of the business names are registered as a trade mark. 13.1% of business names potentially conflict with registered or pending trade marks. These statistics highlighted the need to raise the awareness of the differences between business names and trade marks within the small to medium enterprise sector in Queensland. IP Australia will look at offering the program to other states later in the year.

View postcard 1

View postcard 2

30 March 2006
Intellectual Property Laws Amendment Bill 2006

The Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Mr Bob Baldwin, introduced the Intellectual Property Laws Amendment Bill 2006 into the House of Representatives today.

A Media Release is now available.

17 March 2006
IP Australia Presents at LESANZ Conference

IP Australia's General Manager of Customer Operations, Peter Cornish, will be presenting at the LESANZ Annual Conference to be held in Perth from the 31st of March to the 1st of April. A variety of LESANZ members will attend the conference including management representatives from companies both large and small, scientists, engineers, academics, government officials, lawyers and patent attorneys. Peter joins a list of international and domestic IP experts who will be sharing their thoughts on intellectual property and commercialisation.

IP Australia is a sponsor of this event and encourages those interested in IP or commercialisation of IP in Australia and overseas to consider attending.

For more information on the conference visit: www.lesanz2006.com

24 February 2006
Improvements to ATMOSS and Trade Mark e-forms - 4 March 2006

On 4 March 2006 IP Australia will be making a number of enhancements to the Australian Trade Marks Office Search System (ATMOSS) and the Trade Mark e-forms.

View the full details of what is in included

21 February 2006
Minister urges small businesses to protect their intellectual property

Minister for Small Business and Tourism, the Hon Fran Bailey MP has urged small business to ensure their intellectual property is safely secured or risk putting their livelihoods at risk.

Full media release available.

15 February 2006
IP Australia Now Accepts Payment via American Express (AMEX)

IP Australia is pleased to announce the introduction of American Express card (AMEX) to the available methods of payment.

View the full Official Notice for more information, including exclusions.

2 February 2006
Delay in publication of IPC7 to IPC8 reclassified data.

Due to delays in receiving reclassified IPC marks from the EPO, IPC7 to IPC8 reclassified data will not be published or available through the IP Australia searching facilities until April 2006.

IP Australia apologises for any inconvenience caused by this delay

Please follow the link below for more information.

Delay in publication of IPC7 to IPC8 reclassified data

23 January 2006
Improvements to the AU Published Data Searching (APPS)

IP Australia have recently made improvements to the AU Published Data Searching (APPS).

These include:

• A refresh of the site's look and feel;
• Improvements to search results response times;
• Modifications to the 'contains' operator within the Advanced Search to no longer require the use of wildcards; and
• Changes to the Help pages to reflect changes to the search functionality.

17 January 2006
Consultation Paper - Access to Trade Marks Documents.

IP Australia is considering introducing a new system under which documents on trade mark files can be accessed, to replace the current system of access under the Freedom of Information Act 1982 ( the FOI Act). Comments are sought regarding this proposed system. Please have comments in by 3 February 2006.

Consultation paper on a new access regime to documents on Trade Mark files

11 January 2006
Temporary Disruption to IP Australia's Financial Accounting System - 25-30 January 2006.

IP Australia is upgrading its financial accounting system. As a result, all Patents interactive online services (except searching) will become unavailable from 11.00pm Wednesday 25 January until 7.00am Monday 30 January. Trade Marks and Designs will be unaffected. Find out more information about the financial system upgrade.

11 January 2006
Patents Office change of format of Volume 2 and Volume 3 of the Manual of Practice and Procedure.

In January 2006 the format of the Manual of Practice and Procedure Volume 2 - National and Volume 3 - Oppositions, Courts, Extensions & Disputes was changed.

Note that:

• The content of the new online format is up to date, and will continue to be updated.
• Instructions for how to use the new online format form part of the Manual of Practice and Procedure, and cover navigation, printing, searching, and keyboard shortcuts.
• The Adobe Acrobat format of Volume 1, Volume 2, and Volume 3 are no longer up to date or being updated. These versions will be removed from the IP Australia web site on 12 February 2006.
• Feedback about the new online format of the Manual of Practice and Procedure is welcome. Consult IP Australia's Customer Service Charter for formal feedback mechanisms.

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