Intellectual Property Laws Amendment Act 2015 (No. 8)

We have recently reported on the Intellectual Property Laws Amendment Bill 2014, including proposed changes to intellectual property legislation in Australia1,2.

The Intellectual Property Laws Amendment Bill 2014 was passed by parliament on 9 February 2015 and given Royal Assent on 25 February 2015. As a result, the Bill has become the Intellectual Property Laws Amendment Act 20153. The various changes to the relevant laws will come into force at different times, as discussed further below.

The Changes

As reported previously, the changes introduced by the amending Act are being made for a number of reasons, including:

  • Implementation of the TRIPS protocol to enable generic production of patented pharmaceuticals in Australia, under compulsory licence, for export to developing countries experiencing a health crisis; and
  • Implementation of a single trans-Tasman patent application/examination process (and patent attorney regime).

The amending legislation will also:

  • Extend the jurisdiction of the Federal Circuit Court to Plant Breeders’ Rights matters; and
  • Attend to a few administrative and technical amendments to the relevant Patent, Trade Marks, Designs and Plant Breeder’s Rights legislation.

Importantly, the ‘minor technical amendments’ provide a timely reminder that, where a claim relies on a biological material that is not otherwise reasonably available, a sample of that biological material should be deposited under the provisions of the Budapest Treaty no later than that earliest priority date (usually the date of filing of the earliest basic/priority application) to ensure that the claims is entitled to the earliest claimed priority date.

The changes being introduced by the Intellectual Property Laws Amendment Act 2015, and the timing of the relevant provisions coming into force will be further described below.

Implementation of the TRIPS protocol

The changes relating to implementation of the TRIPS protocol have been discussed in a previous article2.

To recap briefly, the amendments to the Patents Act will facilitate generic production of patented pharmaceutical goods, through compulsory licences, for the sole purpose of exporting those goods to a developing country to meet a health crisis.

Strict terms/undertakings will be imposed on the licensee, and patentees will be provided with remuneration on either agreed terms or terms determined by a Court.

The date that these provisions will actually come into force is unclear, as the date will almost certainly be determined by the date that the TRIPS protocol comes into force for Australia. At the earliest, though, these provisions will come into force on 25 August 2015.

When the provisions come into force, they will apply to all patents.

Implementation of a single trans-Tasman patent attorney and patent application/ examination process

The introduction of a single application and examination process for New Zealand and Australian patent applications were discussed in a recent article1.

Briefly, the amending legislation introduces an optional process through which a patent applicant can file applications in Australia and New Zealand through a single action, and on payment of a single fee. Such applications, which will remain as separate patent applications and potentially result in separate patents in each jurisdiction, will then be allocated to a single Examiner (either in New Zealand or Australia), who will examine the respective applications under the laws applying to that patent application. It is hoped that this process will streamline the application and examination process in both countries, and could result in some financial savings.

The amendments will also introduce a single New Zealand/ Australia patent attorney registration regime.

The date that these provisions come into force has not been determined, but will be a date to be fixed by proclamation. In effect, the timing will rely on corresponding implementing legislation being at least passed by the New Zealand Government. If a date for these provisions coming into force is not proclaimed by 25 February 2017, these provisions will be repealed, but can be expected to be reintroduced through later amending legislation.

Enforcement of Plant Breeders’ Rights

Currently, plant breeders can only enforce their rights through the Australian Plant Breeder’s Rights Act by commencing proceedings in the Federal Court of Australia. This can be a very expensive process, whereas many plant breeders are small entities with limited resources. The Federal Circuit Court is more accessible and more cost-effective than the Federal Court, and this amendment to the Plant Breeder’s Rights Act may come as a welcome change.

The provisions relating to this change will come into force on 25 August 2015.

Administrative and Technical Amendments

The administrative changes include repeal of certain provisions relating to retention of documents by the government, and associated corrections. These provisions came into force on 26 February 2015.

The technical changes include attendance to “minor drafting oversights” existing in the Patents Act 1990 as a result of the Raising the Bar legislation that came into force on 15 April 2013. Those amendments include amendment of sections of the Patents Act relating to Australian provisional patent applications describing inventions that require a description of a microorganism and the priority date of claims relying on those deposits and the provisional application for priority. The term “micro-organism” should be read as including any micro-organism, other cell cultures, including hybridomas, plant material, especially seeds, plasmids, etc).

This is a timely reminder that, when the Raising the Bar Act came into force, the associated Regulations introduced the requirements that:

  • In order to properly claim a priority date equivalent to the filing date of an earlier patent application, the earlier patent application needed to disclose the claimed invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. Where a claim relies on biological material that is not otherwise reasonably available, in order to meet the disclosure requirements, the specification of the basic/priority application should include the relevant information on the characteristics of the micro-organism that was known to the applicant; and, importantly
  • The micro-organism should have been deposited at a recognised International Depositary Institution under the provisions of the Budapest Treaty, no later than the earliest priority date.

If these circumstances are not met, then the priority date of the relevant claim(s) may be determined based on when those circumstances are first met.

However, if these circumstances are not met, the relevant provisions are not prescriptive, and entitlement to the earliest priority claim might be shown through alternative means. Nonetheless, out of caution, we recommend making a deposit of relevant biological material no later than the date of filing of the earliest basic/priority application, if the earliest priority date of a claim that relies on that material is to be ensured.

When drafting the Raising the Bar legislation, similar provisions relating to Australian provisional patent applications (typical Australian basic/priority applications) were overlooked, and the amending legislation4attends to correcting this oversight.

Some may have noticed that these changes relating to inventions that involve micro-organisms, as introduced by the Raising the Bar legislation, represented a shift in Australian law. Before those provisions came into force, the biological material could be deposited as late as the date of filing of the convention application, rather than by the earliest priority date.

While the amendments specifically relating to provisional patent applications describing inventions involving micro-organisms come into force on the earliest of a day fixed by proclamation or 25 August 2015, the similar provisions relating to convention/PCT applications have been in force since the Raising the Bar legislation came into force (15 April 2013) and apply to patent applications where examination was not requested before that date.