Last updated: 
28 March 2018

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 was introduced to the House of Representatives on 28 March 2018, and is currently before the Parliament for consideration.

Schedule 1 of the Bill and associated regulations include amendments to:

  • clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark (PC recommendation 12.1(c))
  • expand the scope of essentially derived variety declarations in the Plant Breeder’s Rights (PBR) Act (PC recommendation 13.1)
  • reduce the grace period for filing non-use applications under the Trade Marks Act (PC recommendation 12.1(a))
  • repeal section 76A of the Patents Act, which requires patentees to provide certain data relating to pharmaceutical patents with an extended term (PC recommendation 10.1).

Schedule 2 of the Bill includes amendments to allow PBR exclusive licensees to take infringement actions, and for the award of additional damages, under the PBR Act, measures intended to streamline a number of processes for the IP rights that IP Australia administers, and a number of technical amendments. Further information on the main PBR changes is available here. These items are included in Schedule 2 to the draft Bill.

There will be further measures and amendments required to implement other aspects of the Government’s response to the PC Inquiry (Part 2) following this first Bill and associated regulations (Part 1). 

Consultation

From 23 October to 4 December 2017 IP Australia released the draft legislation for public comment. Thank you to all who contributed and provided submissions to our consultation.

We have considered all the submissions and a response to this consultation detailing further changes, other outcomes and our reasoning can be found below:

The Government has decided to undertake further industry consultation targeted at better understanding the needs of innovative SMEs before the phase out of the innovation patent occurs.

Draft legislation and explanatory materials

These materials are available in Word version

Or in PDF version

Submissions received 

The consultation period closed 4 December 2017. 

We received 19 non-confidential submissions from the following:

Aristocrat Technologies Australia

Australian Nurserymen’s Fruit Improvements Company (ANFIC)

Australian Seed Federation (ASF)

Christopher Prescott

CropLife Australia

Davies Collison Cave Law Pty Ltd

Dr Ana Penteado

FICPI Australia (Australian Federation of Intellectual Property Attorneys)

Gilbert+Tobin

Grains Research and Development Corporation (GRDC)

Institute of Patent and Trade Mark Attorneys (IPTA)

International Trademark Association (INTA)

Kenta Kitamoto

Law Council of Australia (LCA)

Law Institute of Victoria (LIV)

National Farmers Federation (NFF)

PGG Wrightson Seeds

Shimano Oceania Holdings

Warwick Rothnie

Contact officer

Andrew Wilkinson Ph: (02) 6225 6199 Email: andrew.wilkinson@ipaustralia.gov.au