Submitted on Tuesday, June 4, 2019 - 15:38
Name or Organisation: AIPPI Australia
We refer to the request for comments on the broad direction that future policy work should take. We apologise for the delay in response. Whilst there are many policy areas where further consideration and improvement is possible, we would like to propose some specific areas where we believe change could have a significant impact:
1. Patentable Subject Matter
It will come as no surprise to IP Australia that this is an area of contention and, frankly, confusion. Extensive and ongoing developments in case law, and in IP Australia practices in response to the decisions, have created a difficult area for practitioners and users. There are situation where it is often unclear to practitioners at every level (from drafting patents, prosecuting, advising to enforcing) whether a particular claimed invention relates to patentable subject matter, and even what is the correct analytical approach to take when making that assessment. For example, it is unclear when determining whether the invention is a manner of manufacture what prior art is available, how is it to be read and assessed, and how this analysis interacts with the assessment of novelty and inventive step. This is of particular concern in relation to computer implemented inventions, and in relation to patents relating to genetic material and genetic testing.
We note that from our perspective, our current legal position is an outlier relative to international norms.
2. Grace Periods
There are a number of issues relating to the scope and application of grace periods which we believe are worthy of attention. In relation to designs, there are the existing provisions of s18, which in limited cases act in a similar way to a grace period. We think there are sound arguments for a more general grace period for designs for disclosures derived from the applicant. There are practical reasons to align this to the grace period for patents, in part to simplify the process of educating applicants.
In our view there is also scope to clarify and perhaps revise the operation of grace periods for patents. Some areas which could be visited include, for example:
- Why the grace period does not extend from the date of a provisional filing
- Whether the grace period should apply before Convention priority dates
- The interaction of the grace period with secret prior art, particularly by the same applicant
3. Best Method
Australia is now a true outlier, as all other major economies ( e.g. US, Europe, China, Japan, Korea) do not require disclosure of a best method. This potentially disadvantages Australian applicants, who must disclose a best method when competitors may not need to do so. Recent case law relating to divisionals and the need to ‘update’ best method highlights the practical issues for applicants.
4. Designs Law Reform
We recognise that a process of review has taken place, but no substantive change has yet occurred. We note that there are several areas where Australia is out of step with its trading partners, for example:
- Protection for partial designs
- Protection for GUIs
- Hague agreement membership ( all ASEAN countries have agreed to join, for example)
- Multiple designs
- Deferred publication
Taking practical steps on law reform in this area has the ability to greatly benefit the design community in Australia.
5. Trade Mark Reform
There are two issues of particular concern.
1). National trade mark offices are constantly looking for ways to achieve fast and effective protection for TMs. Problems generally arise from administrative issues (ie delays in processing at the relevant office), but also from zombie marks (see also below) and circumstances where the relevant office has allowed registration when it shouldn't have. Therefore, the fight moves to a post-registration point, rather than taking place at examination or opposition. In practice, IP Australia's changes to the opposition process in 2013 seem to have shifted the delay from the parties involved in the opposition to delays at IP Australia. IP Australia could consider following the rest of the trade mark world and adopting a response deadline, rather than an acceptance deadline.
2). There are a number of studies taking place in Australia, China, the EU and USA about zombie marks and clutter on trade mark registers. Zombie marks are marks which are pending or registered but are not in use or of interest to the applicant/owner, and are simply waiting for time to pass until the mark drops off the register (or is actively removed). In the meantime, they block other traders from registering their own trade marks. The current suggestions from academics is to reduce the examination time frame (from 15 months to 6 months) and to allow non-use actions to be filed 3 years after filing instead of the original 5 year period (which are pleased to note has been implemented in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 now in force). However, consideration has not been given to amendment or deletion of section 95(3), which states that the Registrar is only required to advertise removal actions for opposition once the trade mark has achieved registration. Removal of s95(3) would give parties seeking to register marks which are blocked by a zombie application an avenue for removing the zombie mark by way of a no-intention-to-use removal action under s94(2)(a).
IP Australia response – August 2019
As you are no doubt aware, IP Australia’s current legislative agenda focuses on implementing key aspects of the government’s responses to the Productivity Commission’s review of Australia's IP arrangements and the former Advisory Council on Intellectual Property’s (ACIP) Review of the designs system. Once this is completed, there will be greater opportunity to progress other reforms.
Later this year, we will develop IP Australia’s Forward Legislative Agenda for the government to consider. We welcome and appreciate your feedback outlining AIPPI’s current priorities. Your feedback on issues relating to patents and trademarks will be fed into our consideration of the Forward Legislative Agenda. As explained below, the issues relating to designs that you have raised are currently being considered in a proposed bill planned for introduction to Parliament in 2020. In a number of areas, we would also welcome any further information AIPPI may be able to provide as outlined below.
1. Patentable Subject matter:
IP Australia understands the concerns you have expressed. IP Australia’s understanding of the principles that apply, particularly in relation to the technologies you specify, are set out in the Manual of Practice and Procedure. To assist users, IP Australia recently conducted a series of presentations to the attorney profession around Australia on the patentability of computer implemented inventions.
We believe that these issues should be further bedded down before it is clear whether legislative change would be necessary or desirable.
2. Grace Period (patents and designs):
Grace periods for designs has been identified for action and we intend to include this item (policy ID 41) in the proposed ‘ACIP’ designs Bill (see also item 4 below). Consultation on a number of policy proposals for inclusion in this Bill is proposed to commence later in 2019. We will inform you when this consultation takes place and would welcome your feedback.
Regarding grace periods for patents, we note the issues you have identified and would encourage you to provide more information on the specific issues. In particular, we would welcome examples of how the grace period has proven problematic in the circumstances you mention.
3. Best Method (patents):
This issue was discussed at recent Patents Consultation Group (PCG) meetings. IP Australia understands that this is a concern to the profession and is awaiting further information from PCG members. In the meantime, any information about the magnitude of the inconvenience created by this issue would be of assistance. Feedback can also be submitted via Policy ID 15.
4. Designs Reform:
As mentioned above, the development of the proposed Bill relating to designs is considering some of the issues you have raised:
- Protection for partial designs;
- Protection for GUIs; and
- Deferred publication
As noted above, consultation on these and other issues will take place later in 2019.
In addition, IP Australia has also commenced a holistic review of the designs system. A Designs Review Project (DRP) has been set up to:
- Better understand the design ecosystem, and the role of the design rights system in incentivising the creation and commercialisation of design innovations;
- Better understand what helps and what hinders design innovation; and
- Ensure the design rights system is effective, efficient, adaptable and accountable.
We would encourage the AIPPI to provide any further input on the designs system to the DRP. More information is available here.
Regarding Hague Agreement membership, IP Australia undertook an economic analysis that estimated a net cost. However, the analysis acknowledged that not all costs and benefits could be quantified. IP Australia will continue to monitor the Hague Agreement landscape, including the impact of recent and future members joining.
5. Trade Marks Reform:
You have raised some important trade mark issues that include:
- Reducing the examination time frame. IP Australia notes ongoing stakeholder concerns around trade mark timeframes. We previously consulted on time frames in the Exposure Draft of the IP Laws Amendment Bill 2017 (published as ID 66 on the policy register), and we think there is likely to be a case for further consideration in the near future. This issue is also a topic of discussion in the WIPO Madrid Working Group due to feedback from users on the impact of differences around the world in time limits to respond to adverse reports.
- Allowing non-use actions to be filed three years after filing instead of the original five year period. As you noted, this has been implemented in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018. We welcome feedback on the effect of the change in practice to assist with our ongoing evaluation.
- Removal of section 95(3) of the Trade Marks Act. We thank you for drawing our attention to this issue. We will add this to the policy register for consideration and prioritisation, and as above, would appreciate any further examples and evidence you are able to supply demonstrating when this provision has caused a problem.
- In relation to zombie or unused marks, I wanted to draw your attention to the recent economic research paper on trade mark clutter from IP Australia, which you might find interesting.
Further on the topic of Trade Mark Reform, the team would like to seek clarity on one issue. You commented that “In practice, IP Australia’s changes to the opposition process in 2013 seem to have shifted the delay from the parties involved in the opposition to delays at IP Australia.” If delays are being experienced in the opposition process due to actions by IP Australia, we would like to know where so we can work to improve our service.