From 30 August to 17 November 2017, IP Australia sought public comment on five IP policy matters, four of which form part of IP Australia’s proposed implementation of the Government’s response to the Productivity Commission’s 2016 report on Australia’s IP arrangements (PC report), and one which relates to a trade marks issue. For ease of access, the papers are available individually at the links below, and as a single document here. The consultation period closed on 17 November 2017.
We received 18 non-confidential submissions from the following:
Aristocrat Technologies Australia
Dr Chris Dent
Dr Hazel Moir
Dr Jane Nielsen and Dianne Nicol
Dr Mark Summerfield
EFPIA, IFPMA, JPMA and PhRMA
FPA Patent Attorneys
Institute of Patent and Trade Mark Attorneys (IPTA)
International Federation of IP Attorneys (FICPI)
Law Council of Australia (LCA) and Queensland Law Society (QLS)
Law Institute of Victoria (LIV)
New Zealand Institute of Patent Attorneys (NZIPA)
Copies of these submissions are available here.
The legislative amendments relating to these issues are proposed for inclusion in a Bill intended for introduction to Parliament in 2018 (following drafting and proposed further consultation on an Exposure Draft of the amendments).
IP Australia also consulted the public on the implementation of other measures covered by the Government’s response to the PC report (Part 1), with a view to introducing this set of amendments into Parliament in early 2018. These measures include phasing out of the innovation patent system, the plant breeder’s rights recommendation and the majority of the trade mark recommendations. The consultation period closed on 4 December 2017.
Paper 1: Amending inventive step requirements for Australian patents
This paper discusses the proposed implementation of the Government’s response to recommendations 7.2 and 7.3 of the PC report. The PC recommended that IP Australia further align the inventive step standard for the grant of a patent in Australia with that of the European Patent Office through raising the inventiveness threshold and introducing a requirement for applicants to disclose the technical feature of their invention.
The Government supported these recommendations, and the paper puts forward options for changes to the Patents Act 1990, and the guidance that would be included in the explanatory materials accompanying the changes.
Paper 2: Introduce an objects clause into the Patents Act 1990
This paper discusses the proposed implementation of the Government’s response to recommendation 7.1 of the PC report. The Government’s response supports the PC recommendation that an objects clause be introduced into the Patents Act 1990.
An objects clause provides additional clarity and guidance to the community on the purpose of legislation, assists the courts in interpreting the legislation, and can be used to resolve uncertainty and ambiguity. This paper discusses options for the precise wording of an objects clause to set out the purpose of the patents legislation.
Papers 3 & 4: Amending the provisions for Crown use of patents and designs; and amending the provisions for compulsory licensing of patents
In its response to the PC report, the Government highlighted that in addition to an objects clause, it would also consult on recommendations made by the PC in its 2013 Report, Compulsory Licensing of Patents. These recommendations are intended to ensure that the Crown use and compulsory licensing provisions are working as intended.
Paper 3 discusses options for reform of Crown use provisions for patents and designs. The PC considered that the current provisions were unclear on the purposes for which Crown use may be invoked, and did not sufficiently provide for transparency and accountability in the use of those provisions. Options for reform include clarifying the purposes for which Crown use can be invoked, and introducing a ministerial oversight process and remuneration standard.
Paper 4 discusses options for the reform of compulsory licensing provisions for patents. The PC considered that there was uncertainty as to how the current provisions applied. Options for reform include changing the statutory test and remuneration standard for the grant of a compulsory licence. Paper 4 also discusses proposed changes to address an issue raised by stakeholders concerning compulsory licences and dependent patent inventions.
Paper 5: Introducing divisional applications for international trade marks
This paper discusses the introduction of divisional trade mark applications (divisionals) for International Registrations Designating Australia (IRDAs) filed under the Madrid Protocol. Divisional applications for trade marks are currently available under Australian legislation, but only for applications made directly to IP Australia and not for IRDAs.
The paper also discusses consequential proposals to harmonise and amend the existing practice in Australia for dividing domestic trade mark applications to align with the new IRDA divisional procedures.
While these proposals are not related to the PC report, IP Australia considers them high-priority for implementation in 2018.