On 20 February 2015, IP Australia released the public consultation paper: Proposals to streamline IP processes and support small business– a product of the Government's Cutting Red Tape deregulation agenda.
Following the significant reforms under Raising the Bar in 2012, the Government has set out a number of proposals falling under three headings:
- Aligning and simplifying
- Assisting small business
- Technical fixes
There are 22 proposals aimed at delivering consistency with respect to both the administration of, and rights granted under, the Trade Marks Act 1995, the Patents Act 1990, the Plant Breeder's Rights Act 1994 and the Designs Act 2003 (collectively the IP Laws). Each preferred proposal is listed after a number of options have been set out. Most of the proposals (16 of 22) fall under the 'Aligning and simplifying' heading and we have focussed on those here.
Aligning and Simplifying
As the title suggests, this chapter is concerned with addressing inconsistencies between the IP Laws. For example, the IP Laws except the Plant Breeder's Rights Act 1994 allow a 6 month 'grace period' in which to pay a renewal fee after it is due. The status of rights during the grace period, however, is different under each Act – a patent remains in force and can be infringed, a trade mark registration expires but remains on the register and cannot be infringed, and there is apparent uncertainty under the Designs Act. The preferred option is to amend the IP Laws to be consistent with the Patents Act – i.e. plant breeder's rights (PBRs), designs and trade marks will remain valid during the grace period and will be actionable for infringement (except with respect to trade marks).
Other significant proposals include:
- Re-examination/revocation (#2): Currently there is inconsistency across the IP Laws with respect to the re-examination and revocation procedures: the formal steps in the processes; the discretion to refuse, or refuse to consider, a request for review; the costs of the review and the payment of fees; and the involvement of the third party requestor in the review process (i.e. whether they are provided with a copy of the report/reasons and have a right to be heard).
- The preferred option is to refine the patent re-examination process and amend the remaining IP Laws to substantially align the review process with patents (while still accounting for important differences between the rights).
- Extensions of Time (# 3): Patent, trade mark and design extensions are available in a range of circumstances, whereas PBR extensions are available in limited circumstances. Furthermore, some extensions are discretionary while other are not. It is also stated that '[l]ong extensions create uncertainty and opportunity costs for third parties who want to know their freedom to operate'.
- The preferred option is a combination of a number of proposals, including:
- align PBR extensions with those for patents and for a wider range of actions;
- allow extensions of time for renewal grace periods but not renewal dates for all IP rights;
- make the ‘despite due care’ extension available for all IP rights and have no limit on the period of the extension; and
- for all rights, limit the ‘error or omission by applicant/owner’ extension to 12 months; and make all extensions of time non-discretionary.
- The preferred option is a combination of a number of proposals, including:
- Filing of documents (#5): Currently the IP Laws vary as to requirements for filing in given circumstances, which include delivering a document either personally or by post; other means prescribed in the legislation; means approved by the Commissioner or Registrar in a notice including electronic filing systems which attract a lower fee; a form approved by the Registrar; and directions issued by the Commissioner or Registrar such as how to file opposition documents.
- The preferred option is to replace the various current mechanisms specified in the legislation with two new provisions in each of the Acts: documents must be filed using an “approved means”, and different fees may be prescribed according to whether an act is done using “preferred means”. "Approved means" defined as filing personally, by post, by eServices, by Business to Business (B2B) or by the Objective Connect system for specified opposition documents, and "preferred means" is the eServices channel, for which lower fees would continue to be charged to reflect the lower administrative cost.
- Official Journals and Registers (#6): IP Australia proposes to remove its obligation to publish journals as the relevant information is available through IP Australia’s public search databases (ATMOSS, AusPat, ADDS and PBR database) and the online publication of IP Australia’s official notices. IP Australia proposes to increase the functionality and services of the public databases.
- Self-service Amendments (#7), Signatures (#8) and Certificates (#9):Under proposal 7, rights holders will be able to self-amend administrative details such as names and addresses, instead of applying for such amendments which must be actioned by IP Australia. Substantive amendments that required IP Australia to exercise judgement would continue under the current system. Under proposal 8, the requirement for signatures under the Patents Act for certain low risk documents would be removed. Under proposal 9, the requirement for IP Australia to issue certificates for examination, registration and grant would be removed, on the basis of cost and convenience and because the current status of an IP right can be checked on IP Australia’s online databases. The Patents Act and Trade Marks Act would also be amended to no longer provide that a certificate signed by the Commissioner or Registrar is prima facie evidence of a matter. Instead, the Acts would provide that any document approved by the Commissioner or Registrar (or similar wording) would constitute prima facie evidence of a matter.
- Third party requests for examination (#11): This proposal will allow third parties to directly request that the Commissioner examine a standard patent application.Currently, third parties can ask the Commissioner to direct a patent applicant to request examination (and pay a nominal fee of $100 for the request), and the Commissioner must do so. The applicant must request examination within two months and pay the full examination fee or the application lapses. Under the proposal, the third party and the applicant/patentee/registered owner would each pay half of the examination fee.
- Notices to Department of Health (# 13): Owners of extended pharmaceutical patents are presently required to provide the Department of Health with details of the amount and origin of any Commonwealth funds spent on research and development of the patented drug. The problems, according to IP Australia, are that the information is of limited utility to the government and it is also provided in an inconsistent way by patentees because the data is not clearly defined in the Patents Act. One option is to repeal section 76A, but no preferred proposal is listed.
- Acceptance Timeframe (#14): It is proposed to reduce the acceptance period for trade marks from 15 months to six months but still allow acceptance deadlines to be extended or deferred under appropriate circumstances.
Supporting small business
- Unjustified threats of infringement (# 17): The problem according to IP Australia is that currently the IP Laws provide limited protection against unjustified or groundless threats of infringement of PBR and trade marks. The preferred option is to amend the Trade Marks Act and PBR Act to align with the Patents Act and also to amend all of the IP Laws to allow additional damages to be awarded where the rights holder has made blatant and unjustified threats of infringement against another party.