The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 (the Act) amends the Designs Act 2003 (Designs Act), Patents Act 1990 (Patents Act) and Trade Marks Act 1995 (Trade Marks Act) and begins the process of phasing out the innovation patent system.
As a result, from 26 August 2021 IP Australia will no longer permit the filing of new innovation patent applications.
The phase-out of the innovation patent is part of the Government’s commitment to ensuring our IP system meets the needs of Australian small and medium enterprises (SMEs). IP Australia has a range of resources to help SMEs navigate the IP system. Australian SMEs will receive further dedicated support, with an SME case management service, the SME fast track service, a dedicated outreach program and online portal, to be launched as the innovation patent is phased out over the next 18 months.
The Act is divided into four categories, corresponding to the following eight schedules:
- Schedule 1 – Responses to the Productivity Commission
- Schedules 2 and 3 – Crown use of patents and designs
- Schedule 4 – Compulsory licensing of patents
- Schedules 5 - 8 – Other measures
The Bill also requires a review of the accessibility of the patent system. Further information about the review, and how you can have your say, will follow in due course.
Schedule 1 – Responses to the Productivity Commission
The PC was asked to consider whether Australia’s current IP arrangements provide an appropriate balance between access to ideas and products, and encouraging innovation, investment and the production of creative works. On 25 August 2017, the Government published its response to the PC Inquiry. On 24 August 2018, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 received Royal Assent. That Act implements Part 1 of the Government’s response to the PC Inquiry.
Schedule 1 to this Act gives effect to Part 2 of the Government’s response to the PC Inquiry. These are:
- Introducing an objects clause into the Patents Act.
- Commencing the phasing out of the innovation patent system.
Introducing an objects clause into the Patents Act
The Act introduces an objects clause into the Patents Act, which clarifies the underlying purpose of the patent system and over time will reduce uncertainty in the operation of the Patents Act. The clause provides broad guiding principles that will help ensure that the patent system remains adaptable and fit-for-purpose in the future.
The clause highlights that the benefits of the patents system to society are primarily economic in nature, and these benefits are achieved through incentivising innovation and the dissemination of technology, that, among other things, will lead to improved economic wellbeing. The clause is intended to clarify and clearly articulate the goals of the patent system, and to assist courts in interpreting the Patents Act in cases where the text of the legislation is uncertain or ambiguous. However, the objects clause does not alter the ordinary meaning of the legislation or overturn existing case law and established precedent.
Commencing the phasing out of the innovation patent system
This Act commences phasing out the innovation patent system, as follows:
- No new innovation patents will be able to be filed from 26 August 2021 (AEST). The last day you can file a new innovation patent will be 25 August 2021.
- Existing innovation patents that were filed on or before 25 August 2021 (AEST) will continue in force until their expiry. This will ensure current rights holders are not disadvantaged.
- You will still be able to file a divisional innovation patent application after 25 August 2021 (AEST), provided that the parent application for the divisional was filed on or before 25 August 2021.
- You will still be able to convert a standard patent application to an innovation patent application provided the standard patent application was filed on or before 25 August 2021 (AEST).
- No extensions of time will be available for late filings of innovation patents.
Whilst phasing out the innovation patent, the government remains committed to dedicated support services to help SMEs navigate the IP system. Small businesses will receive dedicated support and services to help ensure they are not disadvantaged.
Schedules 2 and 3 – Crown use of patents and designs
Crown use is a rarely used safeguard. It allows the government to step in when action is necessary to deal with an emergency, or other public interest issues and access patented inventions and designs.
This Act introduces measures to improve transparency and accountability of Crown use. The amendments modify the Acts to clarify the circumstances in which Crown use can be invoked, introduce a process of Ministerial oversight, and provide better guidance to the courts on the remuneration standard that should be used in determining the level of compensation to be paid to the rights holder. These amendments improve the balance between the rights holder and the ability of the Government to ensure that the community’s access to technology is not restricted.
Schedule 4 – Compulsory licensing of patents
Schedule 4 implements recommendations made in the 2013 PC Report regarding compulsory licensing. The Act changes the test applied by the courts when determining whether a compulsory license should be granted. The amendments remove the current ‘reasonable requirement of the public’ test and replace it with a ‘public interest’ test.
These amendments improve the balance between the rights of the patent owner and the interests of the broader public.
Schedules 5, 6, 7 and 8 — Other measures
Collectively, schedules 5-8 of the Act make a number of minor amendments to the Patents and Trade Marks Acts to improve, streamline and modernise the administration of the Australian IP system and to make a number of minor technical fixes. These changes reduce delays for businesses and ensure that the IP rights system continues to operate effectively. Specifically:
Schedule 5 – Seals
Schedule 5 amends the Patents Act and Trade Marks Act to allow for the official seals of the Patent Office and the Trade Mark Office to be kept and used in electronic form when supplying electronic certified copies of documents to customers. This includes a certified copy of a patent specification to establish a priority date for overseas filings, certificates for trade marks, or as evidence for legal or other proceedings. The new legislation alleviates the need to supply customers with paper copies of certified documents.
Schedule 6 - Specifications
Schedule 6 amends the Patents Act to make a technical correction around ‘omnibus claims’. These are claims in patent specifications that make reference to features of the invention disclosed in the description, drawings or examples. The Raising the Bar Act prevents omnibus claims from being filed that are not absolutely necessary to define the invention.
Due to a drafting oversight, the Raising the Bar Act only allowed this requirement to be considered and reported on during examination of standard and innovation patent applications. This amendment now allows IP Australia to consider and report on this requirement in various other stages including amendments after acceptance of an application, amendments after the grant of a patent, re-examination, opposition or revocation proceedings.
Schedule 7 - Protection of information
Schedule 7 amends the Patents Act to improve the handling of sensitive information by the Commissioner of Patents, by granting the Commissioner power to redact sensitive information from patent documents, including the power to partially or wholly redact a document, and publish a redacted version.
Schedule 8 - International applications
The Intellectual Property Laws Amendment (PCT Translation and Other Measures) Regulations 2019 removed the requirement to file a certificate of verification for most patent documents.
Schedule 8 is an enabling provision that will allow the Patents Regulations to be amended so as to no longer prescribe certificates of verification for one additional transaction – filing a request under section 10 of the Patents Act for the Commissioner to restore a priority date to an international application.
Following the change, a certificate of verification will no longer be required for this request if the international application was not filed in English. An English translation of the international application will still be required.
The Act received Royal Assent on 26 February 2020. The following table provides commencement details of the provisions in the Act.
Schedule 1, Part 1
Schedule 2 to 7
|27 February 2020|
|Schedule 1, Part 2||26 August 2021|
|Schedule 8||26 August 2020|
For detailed information on the Act, please see the Explanatory Memorandum.
The majority of amendments included in the Act have been developed over a number of years.
In 2017, IP Australia consulted on the measures in schedules 1-4 of the Bill in the form of options papers:
- Introducing an Objects clause into the Patents Act 1990
- Crown use of Patents and Designs
- Compulsory licensing of Patents
We received 18 non-confidential submissions.
IP Australia consulted on the phasing out of the innovation patent system in its consultation of the Exposure Draft and Draft Explanatory Memorandum of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018. Consultation documents and submissions are available.
Following consultation, IP Australia developed Exposure Drafts of the Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2019.
From 23 July to 31 August 2018, the exposure drafts were published for consultation and 18 non-confidential submissions were received. After consideration of all of the submissions, a response to this consultation detailing further changes, other outcomes, and our reasoning was published.
IP Australia was persuaded by submissions that stated the proposed changes to the legislation on inventive step and the accompanying Explanatory Memorandum would not achieve the intended outcome of sufficiently raising the threshold for inventive step. Upon advice from IP Australia of this outcome, the Government decided to postpone changes to inventive step to ensure there is sufficient time to formulate and consult further on options to ensure legislative changes have the intended effect. Further stakeholder consultation will follow in due course.