The Bill follows the Raising the Bar Act that came into effect on 15 April 2013, and is part of the Government's ongoing reform of Australia's intellectual property system. The Bill has six schedules. Some of the schedules seek to refine existing activities. Others seek to implement new initiatives.
Crown use of pharmaceutical inventions (schedule 1)
The Australian Patents Act has Crown use provisions that allow the 'Crown' (in effect, the Australian Government) to exploit a patented invention in certain circumstances.
The rational for the Crown use provisions is that patents that are granted by the Crown should not impede the Crown from acting in the public interest, and the Crown's special position in providing public services as distinct from commercial services. The provisions are rarely used.
The Bill clarifies when the Crown use provisions apply. The Bill amends the Patents Act to say Crown use can be invoked for services that the Australian Commonwealth or a State (of the Commonwealth) has primary responsibility for providing or funding.
The Bill also seeks to strengthen accountability and transparency around Crown use by codifying a scheme for invoking the provisions. Among other things, in most circumstances the Crown will be required to first negotiate with the patent owner before invoking the provisions.
TRIPS Protocol (schedules 2 and 3)
The World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Protocol (TRIPS Protocol) seeks to enable the least-developed and developing countries to manufacture or access patented medicines. The Protocol encourages pharmaceutical patent owners to either:
- provide medicines to developing countries with serious health problems (for example, HIV/Aids, Malaria, Tuberculosis) at affordable prices by price differentiation between developed and developing countries
- license a manufacturer to provide the medicines at an affordable price.
Australia accepted the Protocol in 2007.
The Bill delivers on Australia's obligation to implement the Protocol in its legislation by setting up a scheme by which Australian pharmaceutical manufacturers can apply to the Federal Court for compulsory licenses to manufacture and export patented pharmaceutical inventions.
Although Australia has a strong pharmaceutical manufacturing industry, the low number of applications under the Protocol in other jurisdictions where similar schemes are already in place suggests applications in Australia under the Protocol will be rare.
Plant breeder's rights (schedule 4)
The Plant Breeder's Rights Act enables plant breeders to obtain plant breeders rights (PBRs) for new plant varieties. The owner of a PBR can exclude others from:
- reproducing for sale
- offering for sale.
The Bill amends the Plant Breeder's Rights Act to say that disputes over PBRs can also be taken to the Federal Circuit Court (formally the Federal Magistrates Court). Disputes over PBRs can still be taken to the Federal Court. However, the Federal Circuit Court is generally cheaper, quicker and less formal than the Federal Court. The Government argues disputes over PBRs in plant varieties are normally less complex than patent matters, and often involve small businesses that have limited resources.
The jurisdiction of the Federal Circuit Court was previously expanded in 2012 to hear trade marks and designs matters.
Trans-Tasman single economic market (schedule 5)
Single patent application and examination process
The Bill amends the Australian Patents Act to provide for a single patent application and examination process that covers both Australia and New Zealand. The applications will be examined by a single examiner (from either Australia or New Zealand) under the laws of each country, and each country will grant a separate patent under its own legislation.
The Government argues that because most New Zealand applications are also filed in Australia where they are subject to similar examination procedures, the single examination process will be more efficient and reduce costs for applicants.
Single trans-Tasman patent attorney regime
The Bill also provides for a single trans-Tasman patent attorney regime. At present, the majority of Australian and New Zealand patent attorneys are registered to practice in both countries.
The single patent attorney regime will create:
- a single trans-Tasman register of patent attorneys
- common requirements for registration
- a trans-Tasman code of conduct for patent attorneys
- a common disciplinary process
- common regulatory bodies.
New Zealand patent attorneys who specialise in trade marks will have a 12-month transitional period in which to register as Australian trade marks attorneys without obtaining further qualifications. Unlike Australia, New Zealand does not currently have a separate trade mark attorney profession.
New Zealand will need to pass corresponding legislation before the single examination process and the single patent attorney regime can come into effect.
Other amendments (schedule 6)
The Bill removes the document retention requirements in the Patents Act, Trade Marks Act and Designs Act. IP Australia's document retention requirements will now be governed solely by the Archives Act.
The Bill also corrects several drafting errors in the Raising the Bar Act.