IP Australia has previously advised that legislative proposals in the exposure draft Intellectual Property Laws Amendment Bill 2017 and regulations were put on hold, until after the Government had finalised its response to the Productivity Commission’s report into Australia’s intellectual property arrangements.
As part of IP Australia’s implementation of the Government’s response to the Productivity Commission’s report, IP Australia has included some of these proposals in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 and associated regulations. The Bill was introduced into Parliament on 28 March 2018. These proposals are:
- Part 3 (regulations) – certain measures relating to extending the period for filing a notice of intention to defend
- Part 4 – Written requirements
- Part 5 – Filing requirements
- Part 6 (regulations) – certain measures relating to international registration of a trade mark
- Part 8 – Signatures
- Part 9 – Computerised decision-making
- Part 10 (& part 9 of regulations) – Address for service of documents
- Part 12 (& part 11 of regulations) – Requirements for patent documents
- Part 12 (regulations) – certain measures relating to acceptance of trade mark applications
- Part 14 (regulations) – Multiple copies of design representations
- Part 15 – Unjustified threats
- Part 16 – Ownership of PBR and entries in the Register
- Part 17 (& part 15 of regulations) – Trade mark oppositions
- Part 18 – Seizure notices
- Part 19 – Publishing personal information of registered patent or trade marks attorneys
- Part 20 – Prosecutions
- Part 21 (& part 16 of regulations) – Secretary’s role in the PBR Act
- Part 22 – Updating references to the Designs Act
The following proposals remain on hold, and will be considered further at a later date:
- Part 1 – Renewals and terminology
- Part 2 – Examination, re-examination and reconsideration
- Part 3 – Extensions of time and protection of third parties
- Part 6 – Official journal
- Part 11 (& part 10 of regulations) – Examination of standard patent requests and specifications
- Part 13 (& part 12 of regulations) – Acceptance of trade mark applications
- Part 14 (& part 13 of regulations) – Registration of designs
The following proposal will not be implemented in light of Part 9 (mentioned above) which will allow for these types of amendments:
- Part 7: Amendment of applications or other documents
The Plant Breeder’s Rights Advisory Committee (PBRAC) has been formally abolished under the Statute Update (Smaller Government) Act 2018. The change however has no effect on the newly established Plant Breeder’s Rights Consultation Group (PBRCG). The PBRCG, supported by IP Australia, provides specialised advice on plant breeder’s rights matters.
Public Consultation on Exposure Draft Bill and Regulations
From 23 November 2016 to 6 February 2017, IP Australia sought public comment on the Exposure Draft of the Intellectual Property Laws Amendment Bill 2017 and the Exposure Draft of the Intellectual Property Laws Amendment Regulations 2017.
The exposure draft legislation aims to align and streamline the processes for obtaining, maintaining and challenging intellectual property (IP) rights. Using similar processes for the different IP rights would make the Australian IP system simpler and assist businesses dealing with more than one right. A simpler IP system would reduce the regulatory burden for businesses that use it, and decrease administration costs for the Australian government.
The proposals will require amendments to the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003, Plant Breeder’s Rights Act 1994, Olympic Insignia Protection Act 1987 and the Copyright Act 1968.
The proposals will also require amendments to the Patents Regulations 1991, Trade Marks Regulations 1995, Designs Regulations 2003, Plant Breeder’s Rights Regulations 1994 and the Olympic Insignia Protection Regulations 1993.
The exposure draft legislation and explanatory material is set out in the following attachments:
- Exposure Draft of the Intellectual Property Laws Amendment Bill 2017 in Microsoft Office document format [538.5 KB]
- Draft Explanatory Memorandum to the Amendment Bill in File format [424.23 KB]
- Draft Explanatory Memorandum to the Amendment Bill in PDF format [1.26 MB]
- Exposure Draft of the Intellectual Property Laws Amendment Regulations 2017 in Microsoft Office document format [508 KB]
- Draft Explanatory Statement to the Amendment Regulations in File format [340.17 KB]
We received 17 non-confidential submissions from the following:
- Davies Collison Cave Pty Ltd — 3 submissions
- FICPI Australia (Australian Federation of Intellectual Property Attorneys)
- Gilbert + Tobin
- International Trademark Association (INTA)
- Institute of Patents and Trade Marks Attorneys of Australia (IPTA)
- Law Council of Australia
- Law Institute of Victoria
- New Zealand Institute of Patent Attorneys Inc (NZIPA)
- Rijk Zwaan
- Solubility Pty Ltd — 2 submissions
Copies of these submissions are available here.
Previous consultation on proposals
In 2015, IP Australia invited written submissions to initial consultation papers about proposed 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.
The present Exposure Drafts were then developed based on input from submissions received (along with the addition of further minor changes).