In its 2013 review of compulsory licensing, the Productivity Commission (PC) raised a possible inconsistency between the requirements for compulsory licensing under the s 133 of the Patents Act 1990 and Pt IV of the Competition and Consumer Act 2010 (CCA). This inconsistency may cause uncertainty and confusion for applicants seeking a compulsory licence as a remedy for restrictive trade practices, as there are two possible pathways to obtaining a court order. The first pathway is under the Patents Act 1990 via the Federal Court which has jurisdiction with respect to compulsory licensing. The second pathway exists because s 86(1) of the CCA confers jurisdiction on the Federal Circuit Court for "any matter arising under section 46... in respect of which a civil proceeding is instituted by a person other than the Minister."
The PC recommended removing s 133(2)(b) from the Patents Act 1990; leaving a compulsory licence order for restrictive trade practices only available under the CCA for conduct that breaches Pt IV of the Act. Compulsory licenses would remain available under the Patents Act 1990 in other circumstances such as through the TRIPS Protocol.
Consultation 30-Aug-2017 to 17-Nov-2017
Policy development 20-Nov-2017
Following the Productivity Commission’s report, IP Australia considered this proposal and consulted on it in 2017. It was concluded that no further action is needed at this time. The consultation paper has further information on how this conclusion was reached.