The Government has introduced yet another IP Laws Amendment Bill to Parliament. The new Bill, entitled the "Intellectual Property Laws Amendment Bill 2013", was introduced to Parliament on 30 May 2013. View a copy of the Bill and the accompanying Explanatory Memorandum.
The main aspects of the Bill can be summarised as follows:
Scope of Crown use provisions clarified; processes improved
Amendments proposed seek to implement some of the recommendations made by the Productivity Commission in their recently completed report entitled 'Compulsory licensing of patents'. The Bill provides amendments to the Patents Act 1990 to clarify that Crown use provisions can be used, in appropriate circumstances, to enable the provision of services that the Australian, State and/or Territory Governments have primary responsibility for funding or providing. The provisions also seek to improve transparency and accountability in the process for using the Crown use provisions. Interestingly, the Productivity Commission's report was only released to the public in late May 2013.
New TRIPS protocol amendments for compulsory licensing of pharmaceutical patents
The TRIPS protocol was accepted by Australia in September 2007, and the Bill contains provisions intending to implement this protocol. The TRIPS protocol provides a waiver for Articles 31 (f) and (h) of the TRIPS Agreement in particular circumstances, and is intended to assist developing countries with serious health problems. The provisions will allow the Federal Court to issue compulsory licenses to Australian medicine producers to manufacture and export pharmaceuticals which are the subject of one or more Australian patents to those developing countries. Unfortunately, the legislation does not appear to be well drafted. Although Section 136R specifies that an order must not be made under the provisions that is "inconsistent with a treaty between the Commonwealth and a foreign country", the provisions themselves provide for the export of pharmaceuticals to countries which are not members of the WTO. This appears to go beyond the TRIPS Protocol and may represent a technical breach of the TRIPS agreement.
The Bill also includes particular provisions for "ancillary" compulsory licenses and "cross" licenses in circumstances where the Australian pharmaceutical manufacturer has applied for an order in relation to one patent, but cannot work the invention without infringing another patent. These provisions appear to be completely misplaced, and the cross-licence mentioned in the provisions is not a cross-licence at all; it only goes one way from the patentee of the original pharmaceutical invention to the patentee of the other invention. It is difficult to see how such ancillary licences and cross licences are needed to give effect to the TRIPS protocol, and references to these licences introduce a lack of clarity. It appears that the provisions were thought necessary to comply with Article 31(l) of the TRIPS Agreement, however Article 31(l) is not relevant to the TRIPS protocol. Article 31(l) is only relevant in circumstances where a patentee of one invention is blocked from working his invention by the patent of another, and where that invention involves "an important technical advance of considerable economic significance" over the blocking patent. It is hoped that these unnecessary provisions will be deleted from the Bill before it is passed.
Federal Circuit Court given jurisdiction over Plant Breeders Rights
The Bill includes provisions that allow the Federal Circuit Court to deal with matters relating to the Plant Breeders Rights Act. The Federal Circuit Court was previously known as the Federal Magistrates Court.
Unified patent applications and patent attorneys register for Australia and NZ
These amendments introduce a process for applying for patents in Australia and New Zealand simultaneously, and for examination of the common applications by a single examiner. The aim is to remove a duplication of effort, and make it easier to obtain patents in Australia and New Zealand. The provisions also introduce a new regime for trans-Tasman patent attorneys. Although Australian patent attorneys can currently register as patent attorneys in New Zealand and vice versa, the new arrangement will provide for a single trans-Tasman register of patent attorneys, with registration giving the person the right to practice as a patent attorney in both countries. A single set of registration requirements will be introduced which will substantially conform with the current Australian requirements, and a single trans-Tasman IP Attorneys Disciplinary Tribunal will be established. Although there will be no residency requirement under the new provisions, a trans-Tasman patent attorney will need to have undertaken relevant employment in Australia or New Zealand.
Corrections to the Raising the Bar Act
The Bill includes a number of additional amendments which are necessary to address errors in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. They also remove some unnecessary provisions from the Patents, Trade Marks and Designs Acts. These amendments are relatively minor in nature, and some have taken effect from the date of commencement of the Raising the Bar Act, 15 April 2013.
New measures proposed
According to the press release announcing the Bill, the Government also proposes to undertake a number of other measures to further clarify the patent system and strengthen mechanisms for oversight. According to the new parliamentary secretary for the Department of Industry and Innovation, the Government will:
- appoint a Patent Audit Committee to advise on patent policy settings and undertake audits of patent approvals for certain technology groups,
- commence consultations on a new objects clause for the Patents Act, and
- consult on excluding certain inventions that would be offensive to the public
It will be interesting to see how many of these measures are implemented given the upcoming election on 14th September 2013.