On 20 February 2015, the Hon Karen Andrews MP Parliamentary Secretary to the Minister for Industry and Science, released on behalf of the Australian Government a discussion paper titled ‘Public Consultation: Proposals to streamline IP processes and support small business (‘the Paper’). The Paper is available from the IP Australia website.
Written submissions on the proposals in the Paper should be sent to reach email@example.com no later than 7 April 2015.
Background to the Paper
The Paper seems to be in response to the Australian Government’s New Regulator Performance Framework released on 29 October 2014 as part of the Government’s wider deregulation agenda designed to ensure that there is an appropriate focus on the way regulators administer regulation and its impact on productivity. For the first time all Commonwealth regulators (including IP Australia) are to be assessed by six key performance indicators, one of which is reducing regulatory burden, or in other words ‘cutting red tape’.
The Paper seeks to address what the Government perceives as complexity in the processes for obtaining, maintaining and challenging IP rights, and long delays that do not properly take into account the interests of business, competitors and other third parties. It places a high priority on aligning and streamlining processes, improving service delivery and reducing unnecessary delays.
The Paper seeks stakeholder comments on 22 proposals divided under three main headings:
- Aligning and simplifying (Proposals 1 to 16)
- Supporting small business (Proposals 17 to 20)
- Technical fixes (Proposals 21 and 22)
The Paper provides an outline of the problems, a discussion of the possible options to address the problems and the reason for each preferred option or proposal. A brief summary of each proposal follows:
Aligning and simplifying
a) Proposals that affect all IP rights
1. Aligning renewals: proposal includes introducing a grace period for Plant Breeder’s Rights (‘PBR’) renewals, clarifying the status of IP rights as remaining in force during the grace period, no longer allowing renewals to be paid any earlier than 12 months before the due date and no longer issuing renewal notices to represented trade mark owners.
2. Re-examination/revocation: proposal includes refining the patents re-examination process and amending the trade marks, designs and PBR legislation to substantially align the review process with patents, while still accounting for important differences between the rights. For patents, changes would include allowing multiple examination reports and responses to reports and introducing a six months time limit for completion of a re-examination after the first re-examination report. The Commissioner will proceed to consider revocation if objections not overcome within that time. Third parties who had requested re-examination would have an explicit right to participate in a revocation hearing. Re-examination of trademarks would only be available up to 12 months from registration, as currently. For trade marks, designs and PBR the main features of the process would include that after an initial examination, re-examination could be conducted either at the request of a third party or on the Registrar’s/Secretary’s initiative. Accepted and registered rights would not be revoked without the owner and interested parties having an opportunity to be heard.
3. Extensions of time: proposal includes aligning PBR extensions with those for patents and for a wider range of actions. For all IP rights, allowing extensions of time for renewal grace periods but not renewal dates and limiting the ‘error or omission by applicant/owner’ extension to 12 months. This 12 months limitation would be balanced by making the ‘despite due care’ extension available for all IP rights with no limit on the period of the extension. Proposal also includes streamlining the process for short extensions of time, simplifying and aligning fees and making all extensions of time non-discretionary if meeting relevant criteria.
4. Writing requirements: proposal is to remove the writing requirements for deciding to certify an innovation patent.
5. Defining how documents are filed: proposal is to replace current filing mechanisms in each Act with two new provisions, namely documents must be filed using ‘approved means’ and different fees may be prescribed as to whether an act is done using ‘preferred means’. Both ‘approved means’ and ‘preferred means’ are to be defined with ‘preferred means’ comprising the eServices channel, for which lower fees would be charged.
6. Official journal and registers: proposal is to remove legislative requirement to publish Journals and to replace public notification with recording and publication requirements. Relevant information is now available through IP Australia’s public search databases and online publication of IP Australia’s official notices.
7. Self-service amendments: proposal includes enabling applicants and IP owners themselves to action certain administrative amendments such as change of applicant and agent address details by using IP Australia’s online eServices portal if authorised to deal with the IP right in question. Also proposed to enable Commissioner or Registrar on own volition to amend certain administrative details of an IP application to correct an obvious error.
8. Signatures: proposal is to remove requirement for signatures for various actions where there is minimal risk of action being done without proper authorisation.
9. Certificates: proposal is to amend IP legislation to remove requirements for IP Australia to issue certificates for examination, registration and grant. Electronic issue of certificates will be available for eServices users. Customers will be able to download extracts of the register at any time.
10. Address for correspondence: proposal is to align the address provisions across all IP rights. Applicants would continue to be required to provide an address for service but not for correspondence.
b) Proposals that affect patents
11. Third party requests for examination: proposal is to align standard patents with innovation patents and designs by allowing third parties to directly request examination of a standard patent with fees being split 50/50 between applicant and requestor as per other rights.
12. Colour drawings: proposed to amend Schedule 3 of the Patents Regulations to allow (for an additional fee) colour drawings to be used in all specifications.
13. Extensions of term - notices to Department of Health: the owner of an extended patent is currently required to provide the Department of Health with details of the amount spent on research and development (R&D) including details of the amount and origin of any Commonwealth funds spent on R&D. Apparently the type of information provided to date under current provisions has not been particularly useful. IP Australia therefore welcomes stakeholders’ suggestions as to the types of data that would properly inform policy in the effectiveness of the extension of term scheme or of government funds spent on R&D.
c) Proposals that affect trade marks
14. Acceptance timeframe: proposal includes reducing acceptance timeframe from 15 to six months, abolishing the currently available six months extension but retaining the options of obtaining section 36 deferment or section 224 extension and expanding the grounds of deferment to include overcoming a ground for rejection under section 41.
d) Proposals that affect designs
15. Registration of designs: proposal is to remove the requirement to request registration. If the applicant does not request withdrawal or registration within six months from filing, the application automatically proceeds to a formalities check and registration.
16. Multiple copies of representations: proposal is to remove requirement for applicant to provide multiple copies due to quality prints being readily available with modern electronic scanning techniques.
Supporting Small Business
17. Unjustified threats of infringement: proposal is to align the rights and amend the relevant Acts to provide effective protection against unjustified threats of infringement against another party and to allow additional damages where the IP holder has made blatant and unjustified threats of infringement.
18. Clarify ownership of Plant Breeder’s rights
18.1 Joint Breeders: proposal is to allow more than two breeders to lodge a joint application.
18.2 Correcting an error in the name of the applicant: proposal is to allow for corrections to the PBR Register. The PBR Regulations do not currently enable the Registrar to correct the PBR Register where there is a mistake or omission.
19. Trade marks and shelf companies: proposal is to amend section 27 of the Trade Marks Act to remove the restriction from the reference to a body corporate of one ‘that is about to be constituted’, thereby regularising the procedure when a trade mark owner who intends to assign the trade mark to a body corporate (that includes one already constituted, such as for example a shelf company) applies for the registration of a trade mark.
20. Customs notice of seizure: proposal to amend section 134 of the Trade Marks Act to allow Customs to give notices of seizure by using ‘approved means’ including electronically, rather than being restricted to giving notices ‘either personally or by post’ as at present.
21. Publishing personal information of IP attorneys: proposal to amend the Patents Act and the Trade Marks Act to enable the Professional Standards Board for Patent and Trade Marks Attorneys (‘PSB’) to publish the name and ‘publication’ address of all registered attorneys, as collected by the Dedicated Manager. IP attorneys may continue to use a non-residential address or a post office box if they wish to maintain privacy.
22. Prosecution of IP attorney offences: The patent and trade marks legislation currently provides a number of criminal offences relating to the attorney professions. The prosecution of such offences by attorneys who are natural people must be brought within five years of the commission of the offence and within one year for offences by incorporated patent and trade marks attorneys. The proposal would extend the one year prosecution period to also five years for incorporated patent and trade marks attorneys.
IP Australia’s proposals to ‘cut red tape’ in aligning and simplifying processes and practices across all IP rights and correcting a number of errors and inconsistences in the IP legislation, seem on balance to be helpful. Some changes proposed however, particularly for example to the extensions of time provisions, may confuse overseas IP owners and their agents, at least in the early days, and will take some getting used to. In the long term such changes hopefully will help reduce the complexity of the system for stakeholders.
With its constantly improving data electronic data bases and eServices portals, IP Australia has clearly been embracing the digital age for some time. The proposals to amend all IP legislation to remove requirements to transfer paper documents and to allow stakeholders to make their own simple administrative changes to the Register should not only reduce the service costs to IP Australia but also remove an unnecessary time and cost burden from most stakeholders.
In accordance with the Government’s deregulation framework requiring the impact on the community of all proposed changes to regulation to be assessed, IP Australia has estimated the costs and benefits of each of the preferred options in the Paper. This information on the costing framework and the detailed costings for each of the proposals is found on the IP Australia website [PDF, 943KB].
The public consultation ends on 7 April 2015. IP Australia intends releasing a draft bill of the legislative changes in mid 2015 for public comment, with a view to introducing the bill to Parliament in late 2015, for commencement in 2016.