The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the Act) amends 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: Responses to the Productivity Commission
The Productivity Commission (PC) recently completed a public inquiry into Australia’s IP system. The PC was asked to consider whether current arrangements provide an appropriate balance between access to ideas and products, and encouraging innovation, investment and the production of creative works. The PC's final report was published in December 2016, and the Minister for Industry, Innovation and Science and the Minister for Communications announced the release of the Government's response to the PC’s inquiry on 25 August 2017.
The PC’s final report includes a number of recommendations on IP matters, which received support from the Government. Schedule 1 to this 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: Other Measures
Schedule 2 implements a number of 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.
The Act received Royal Assent on 24 August 2018. The following table provides commencement details of the provisions in the Act.
Schedule 1, Parts 1 and 4
Schedule 2, Parts 1, 4, 5, 13 and 15-21
The day after the Act receives the Royal Assent.
Schedule 1, Parts 2 and 3
Schedule 2, Parts 2, 3, 6-12, 14
A single day to be fixed by Proclamation.
However, if the provisions do not commence within the period of 6 months beginning on the day this Act receives the Royal Assent, they commence on the day after the end of that period.
For detailed information on the Act, please see the Explanatory Memorandum.
From 23 October to 4 December 2017, IP Australia published draft legislation for public consultation, 19 non-confidential submissions were received.
Information on consultation, the draft legislation, stakeholder submissions, and our response to submissions is available here.
The majority of amendments included in Schedule 2 of the Act have been developed over a number of years.
In 2015, IP Australia invited written submissions to two consultation papers on amendments to:
- Streamline IP processes and support small business — 15 non-confidential submissions were received
- Expand use of automated processes by IP Australia — 3 non-confidential submissions were received.
Following consultation, IP Australia developed Exposure Drafts of the Intellectual Property Laws Amendment Bill 2017 and Intellectual Property Laws Amendment Regulations 2017.
From 23 November 2016 to 7 February 2017, the exposure drafts were published for consultation and17 non-confidential submissions were received. The legislative proposals in the exposure drafts were then put on hold, until after the Government had finalised its response to the Productivity Commission’s report into Australia’s intellectual property arrangements
Following the release of the Government’s Response to the Productivity Commission’s report a number of the legislative proposals were included in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018, while others were put on hold or will not be implemented. The following proposals remain on hold. Details of the policy proposals and information on their status are available on our Policy Register: