IP Australia has released an Exposure Draft of the Intellectual Property Laws Amendment Bill 2017. The proposed changes aim to align and simplify the administrative processes and rules relating to patents, trade marks, designs and patent breeder’s rights in order to reduce complexities and delays currently experienced by IP owners.

Responses to the proposed changes can be submitted to IP Australia by interested parties by 22 January 2017.

This article will specifically address some of the key proposed changes to the Patents Act 1990 and the Designs Act 2003, including changes to:

  • Re-examination;
  • Extensions of time;
  • Publication of designs; and
  • Unjustified threats of infringement.

Re-examination

The re-examination process for certified designs is noted as currently lacking in transparency and is inconsistent with re-examination procedures of other IP rights systems.

The proposed changes introduce a formal re-examination process for certified designs, which includes a 6 month time frame for an IP owner to resolve the grounds of re-examination or file a request to be heard. These proposed amendments also specify that the Registrar or Commissioner can issue multiple re-examination reports, with the IP owner having multiple opportunities to respond within the 6 month time frame.

Extensions of time

The current system of obtaining an extension of time is noted as having a potential to create complexities and confusion for IP owners, such as determining which extension is relevant and the supporting documents required. The proposed changes are also intended to facilitate a better balance between IP owners, who require extensions of time to maintain their rights and third parties, who require certainty as to the status of these IP rights.

The intended changes introduce two new types of extension requests:

  1. an extension of time request for 3 months or less; and
  2. an extension of time request for 3 months or more.

Where an extension of time is requested for 3 months or less, the request does not need to be accompanied by a declaration. Instead all that will be required to accompany the request is a statement justifying the extension. Extensions of 3 months or less will now be published to allow any person to object the grant of the extension.

Procedures for dealing with an extension of time longer than 3 months will follow a process similar to the current regime that requires an extension request in an approved form accompanied by a declaration.

Under the intended changes, IP owners are required to file either type of extension of time request within 2 months from them realising the error or omission or the circumstances that prevented the act from being completed in time. However, this deadline may be extended where warranted.

The proposed amendments also restrict the calculation of subsequent extensions from the original due date rather than from the last date of the extension period and are intended to prevent IP owners from obtaining multiple short extensions for the same matter.

The intended changes also remove the Commissioner’s or Registrar’s discretion when deciding whether to grant an extension time. If all the relevant requirements have been satisfied, the Commissioner or Registrar must grant the extension of time.

Requirements for a third party to obtain a licence from the Commissioner or Registrar to exploit an invention or design after the patent or design has lapsed have been removed. Third parties will now obtain automatic protection for exploiting the invention after the day on which the patent or design has lapsed or ceased and before the day on which details of the extension of time were requested.

Publication of designs

The proposed changes also remove the option for IP owners to request publication rather than registration of their design application. However, IP owners are still able to request registration at filing or defer registration for their design application up to 6 months after the priority date of the design application. If an IP owner does not request registration or withdraw their design application before this deadline has expired, the design application will automatically proceed to registration, subject to a formalities check. Examination and certification of registered designs is still optional, so IP owners will effectively be able to “publish” their design by requesting registration and not requesting examination and certification.

Unjustified threats of infringement

Under the current system, where an unjustified threat of infringement has been made, an aggrieved person may apply to Court to obtain damages sustained as a result of the threats. A Court is also able to award additional damages for the flagrant infringement of a patent or design, however, no provisions exist for flagrant unjustified threats of infringement and the damages awarded may not be adequate to prevent these types of threats.

Under the intended provisions, an aggrieved party will be able to apply to a Court for additional damages for unjustified threats involving, for example, flagrancy, deliberate disregard of the IP owner’s right or cynical pursuit of benefits.

Conclusion It appears that these proposed changes will improve and streamline the various IP rights offered and assist foreign and domestic businesses in obtaining IP rights in Australia. IP Australia has invited interested parties to make written submissions to the proposed changes, which can be sent to consultation@ipaustralia.gov.au by 22 January 2017.