The Australian Government's recent response (PDF) to recommendations made last year by the Advisory Council on Intellectual Property (ACIP), has reignited a long-running debate on the effectiveness of the Australian patent system in enforcing patent owners' rights, post-grant.  

On 3 June 2011 the Australian Government released its response to ACIP's February 2010 report, Post-Grant Patent Enforcement Strategies (PDF), which concluded there were significant barriers to the enforcement of patent rights in Australia. ACIP made a number of recommendations aimed at improving access to cheaper and faster alternatives to patent litigation and providing better access to information about patent enforcement mechanisms.

The Government has accepted some, but not all, of the recommendations made by ACIP. The main points arising from the Government response are:

  • Alternative dispute resolution (ADR): ACIP's recommendation to establish an IP dispute resolution centre based within IP Australia, was not accepted. However, the government has proposed to implement other measures to improve access to ADR services, including the development of an online register of accredited ADR providers with expertise in a range of IP areas.
  • Improved information about patent enforcement measures: measures have been proposed to improve the level of publicly available information regarding the scope of protection, patent court proceedings, costs and patent enforcement mechanisms generally.
  • Improved patent enforcement systems in nearby countries: The Government has endorsed IP Australia's ongoing work in assisting other countries in the region to strengthen their patent enforcement systems and in providing resources to assist Australian businesses in enforcing and managing their intellectual property rights in other countries.
  • Monitoring of the pre-grant patent opposition process: ACIP's recommendation that IP Australia continue to monitor and assess the suitability of pre-grant opposition processes locally and abroad, was accepted.
  • No Patent Tribunal: the recommended establishment of a Patents Tribunal as a cheaper and faster alternative to the existing Australian court system, was rejected. It was concluded that such a Tribunal would be of limited benefit, given that it would be unable to exercise judicial power.
  • No expanded Customs powers: ACIP's proposal to expand Australian Customs' seizure powers to enable seizure of suspected infringing products at the Australian border, was not taken up. The Government supported the existing practice whereby Courts can order the detention of goods at Customs after an appropriate finding of patent infringement has been made.