On 20 February 2015, IP Australia released a Consultation Paper containing 22 proposals which are intended to:
- align and streamline their IP processes;
- support small business; and
- fix technical problems relating to the regulation of IP attorneys.
According to information published with the Consultation paper, IP Australia believes the package of proposals will provide annual regulatory savings of between $65,000 and $414,000. The deadline for making submissions is 7 April 2015.
The proposals, which fall into three main groups, are summarized below:
Streamlining IP Processes
Align the payment of renewal fees for patents, trade marks, designs and plant breeders' rights, providing a general six month grace period for renewal payments, and clarifying that the rights remain "live" during the grace period and cease at the anniversary if the fee is not paid.
To implement this proposal the main changes required will be the introduction of a grace period for plant breeders' rights, and amendment of the Patents and Designs Acts to clarify that the rights can be infringed during the grace period.
IP Australia also proposes to limit the payment of renewals to 12 months before the renewal date, and cease their current practice of issuing renewal reminders to trade mark owners who are represented by IP professionals.
Introduce re-examination processes for trade marks, designs and plant breeders' rights which are aligned with the current patent re-examination process, while still accounting for the important differences between the rights.
It is also proposed that the patent re-examination process would be amended to allow multiple examination reports, introduce a six month time limit for completion of re-examination, and allow third parties who have requested re-examination to participate in a revocation hearing.
Align extensions of time for plant breeders' rights with those for patents, while specifying the grounds for "special circumstances" extensions of time in the trade marks legislation.
However, the main proposal is to limit extensions of time for all rights which are based on "error or omission by the applicant or owner" to 12 months. Currently there is no time restriction on extensions based on errors or omissions.
Extensions of time based on the "despite due care" standard will be available for all IP rights and will have no limit on the period of the extension. They also propose to make all extensions of time non-discretionary, and to introduce a streamlined procedure for short extensions of time of up to three months.
Remove the requirement for deciding "in writing" whether or not to certify an innovation patent. This would allow a decision to be made by clicking on a button in IP Australia's systems.
Amend the legislation for all IP rights to replace the existing mechanisms for filing documents with two new provisions for each right.
The two new provisions would specify that the documents must be filed using an "approved means" including a "preferred means", and different fees may be prescribed depending on whether an act is done using preferred means or otherwise.
Remove the requirement for IP Australia to publish journals, and change the definition of the various time periods that currently commence based on the dates events are published in those journals.
A general requirement would be introduced to record prescribed particulars in the Register and to publish particulars after they are entered in the Register. The legislation would still require the Commissioner or Registrar to notify the applicant or rights owner.
IP legislation would be amended to allow applicants and IP owners to make various amendments, such as amending applicant and agent address details, online.
They also propose to replace the requirement for applicants to amend documents with provisions allowing certain particulars of patent applications to be amended, and to introduce new provisions to enable IP Australia to correct obvious errors.
Amend the patents legislation to remove the requirement for signatures. The authenticity of transactions would be verified using other information provided in the application documents.
IP legislation would be amended to remove the requirement for IP Australia to issue certificates of registration or grant. IP legislation would be amended to provide that any document approved by the Commissioner or Registrar would constitute prima facie evidence of a matter.
IP rights holders would be able to download extracts of the Register at any time and use such extracts to prove certain facts. IP Australia intends to make commemorative certificates available upon the payment of a small fee.
IP rights legislation would be amended to remove the requirement for applicants to provide an address for correspondence. The requirement to provide an address for service would be maintained.
Replace the current provision which allows a third party to request the Commissioner to direct an applicant to request examination of a standard patent application with a new provision which allows third parties to request the Commissioner to examine the application. The examination fee would be shared between the third party and the applicant.
Amend the patent legislation to allow for the submission of drawings in colour.
Delete or amend Section 76A of the Patents Act. This section requires patentees who have obtained a pharmaceutical patent term extension to provide the Secretary of the Department of Health & Family Services with a return, setting out certain details of the amount and origin of funds spent on research and development in respect of the drug which was the subject of the application.
IP Australia does not know whether to delete the provision or to amend it, but has invited submissions from interested parties.
Reduce the timeframe for acceptance of a trade mark from 15 months to 6 months.
IP Australia also proposes to abolish the general extensions currently available under Regulation 4.12(3) and expand the grounds of deferment to include overcoming a ground of rejection under Section 41, i.e. that the trade mark does not distinguish the applicant's goods or services from those of others.
Amend the Designs Act to remove the option to allow an application to be published without being registered. If the applicant does not request withdrawal or registration within six months from filing, the application will automatically proceed to a formalities check and registration.
Amend the designs legislation to remove the requirement for applicants to file multiple copies of each representation of the design disclosed in the application.
Provisions to assist small business
Align the provisions in relation to unjustified threats of infringement by including provisions in the Plant Breeders' Rights Act corresponding to those present in the Patents Act, and amending the Trade Marks Act to replace "groundless" threats with "unjustified" threats.
It is also proposed to amend the Patents, Trade Marks and Designs Acts, and possibly also the PBR Act, to allow additional damages to be awarded where the IP rights holder has made blatant and unjustified threats of infringement against another party.
Amend the Plant Breeders' Rights Act to allow more than two breeders to lodge a joint application, and amend the PBR regulations to allow for corrections to the PBR register.
The provisions would be similar to those present in the patents legislation where the Commissioner has the power to rectify the Patent Register to address the omission of an entry, an entry made without sufficient cause, a wrong entry, or an error or defect in an entry in the Register.
Amend Section 27 of the Trade Marks Act to allow trade mark applications to be lodged in the name of an existing shelf company. It may also be necessary to amend paragraph 28(1)(c) of the Tobacco Plain Packaging Act 2011, although it is acknowledged in the Consultation Paper that this may be a sensitive issue.
Amend the Trade Marks Act to allow customs to notify the designated owner of the goods and the trade mark owner notices by "approved means", which would allow notices to be issued electronically.
Technical amendments to the Patents Act and Trade Marks Act
Amend the patents and trade marks legislation to enable the Professional Standards Board to publish name and address information of all registered attorneys. Under the current legislation IP attorneys can prevent their names and addresses from being published by the Professional Standards Board.
Amend the Patents Act and the Trade Marks Act to allow an incorporated attorney to be prosecuted for an offence within five years of the date of the offence. Under the current legislation an incorporated attorney can only be prosecuted for a number of offences within 12 months of the commission of the offence.
What does this mean for IP rights holders?
While some of the proposals will be welcomed by IP rights holders and their advisors, some of the proposals are likely to cause significant concern.
The proposal to amend the Patents Act to limit extensions of time, based on errors or omissions to 12 months, will be of significant concern to all patent owners and their advisors. Amending the extension of time provisions based on the stricter "despite due care" standard so that no time limit applies is unlikely to alleviate these concerns.
The shortened time for obtaining acceptance of a trade mark application is also likely to be of concern.
At the time of writing the Consultation Paper could be found at: http://www.ipaustralia.gov.au/about-us/public-consultations/220631/.