For a number of years, Australian patent owners have expressed concern about difficulties encountered in enforcing patent rights in Australia. Following four years of public consultations, an issues paper and an interim report, the Advisory Council on Intellectual Property (ACIP) has released a final report, entitled "Post Grant Patent Enforcement Strategies", intended to address these perceived difficulties. The primary focus of the review was on non-court procedures for patent enforcement, and this is reflected in the report's nine recommendations.
IP Dispute Resolution Centre (Recommendation 1)
The ACIP identifies as its most important recommendation, the establishment of an Intellectual Property Dispute Resolution Centre (IPDRC) (along the lines of United Nations' World Intellectual Property Organisation's (WIPO) Arbitration and Mediation Center). This Centre would provide a single point of initial contact for those seeking information on patent enforcement and the options available to patent owners, increase the visibility and accessibility of alternative dispute resolution (ADR) mechanisms, and help patent owners determine whether to proceed with a dispute. Although it would not be conducting any of the ADR processes, the IPDRC would effectively operate as a referral point. The ACIP recommends that the Centre be located with IP Australia, as patent owners are generally familiar with the organisation. In addition, the IPDRC would provide physical resources, such as accommodation, and administrative and co-ordination services where appropriate.
Register of experts (Recommendation 2)
The ACIP recommends that, as part of its role, the IPDRC would administer a Register of Experts with legal and technical expertise who could be drawn upon for expert assessment (including non-binding opinions on patent validity and infringement), mediation and arbitration to help provide rights holders with efficient and cost-effective solutions to avoid lengthy and expensive court proceedings.
Patent Tribunal (Recommendation 3)
In the report, the ACIP also recommends establishing a determination mechanism in the IPDRC in the form of a Patent Tribunal. The report proposes that:
- Each Tribunal would comprise up to three people drawn from the Register of Experts to enable the making of quick and inexpensive non-binding determinations
- the Tribunal would take a proactive and inquisitorial role and patent attorneys would have the right to appear; and
- mechanisms would be introduced to encourage parties to comply with the Tribunal's non-binding determinations and to discourage parties from using the courts instead of the Tribunal where it would be inappropriate to do so.
Access to Patent Information (Recommendations 4 and 5)
As part of its review, the ACIP also considered IP Australia's obligation to increase awareness and understanding about patents and the patent system. The ACIP determined that there are a number of knowledge gaps that need to be addressed, and recommended that IP Australia establish a resource which could provide information about patent enforcement. While no particular means of providing this information was prescribed, it was suggested that a website could be devoted to the issue of enforcing patents, or alternatively, that information on this topic could be sent to patent owners when a patent is granted or renewed.
The ACIP also noted that while the Federal Court Rules requires the Commissioner of Patents to be notified of the commencement of patent litigation, they do not require that the Commissioner be notified of the outcome of such litigation. Additionally, the Patents Act 1990 (Cth) only requires the Court to provide the Commissioner with copies of Orders revoking a patent or granting a compulsory licence to a patent. None of this information provided to the Commissioner appears in IP Australia's publicly searchable database. Additionally, it is not currently possible to search the Federal Law Search facility by patent number, preventing this search facility from being easily used to determine what litigation has been conducted in relation to a particular patent. The ACIP recommends that the Patents Act and relevant rules of Court be amended to ensure that the Commissioner is provided with information about the existence and outcome of all patent court actions and that public access be provided to this information through online searchable databases.
Patent enforcement in other countries (Recommendations 6 and 7)
ACIP recommends that IP Australia continue to assist patent owners to enforce their patents overseas, and to encourage and assist countries in the region to improve their patent enforcement systems, both through current efforts with WIPO and through direct assistance to countries, particularly in the Asia-Pacific region. The report also examined internal strategies to help patent owners enforce their patents overseas, such as the advocacy programs in China and Japan, where general industry and country profiles are provided to Australian exporters (This information is provided through the Austrade website). The ACIP recommends that these programs be extended to other countries in the region where Australian companies do business.
Protection through Australian Customs (Recommendation 8)
ACIP also recommends that legislation be introduced to empower Australian Customs officials to seize goods at the border where the rights holder has forewarned them of a shipment of infringing products through a notification process. It is proposed that the products could be released to the importer if the patent holder did not bring proceedings for infringement within a reasonable time. Such a system already operates to the benefit of copyright and trade mark owners. The ACIP also considered it reasonable that the right holder be responsible for seizure and storage costs, which could be recovered in later court proceedings.
The pre-grant opposition procedure (Recommendation 9)
The ACIP acknowledged that there exists criticism of the current pre-grant patent opposition system in that the process is potentially open to abuse by a potential infringer who will benefit most from delaying the grant of a patent, as this delays the patentee's ability to commence infringement proceedings. However, the ACIP was reluctant to recommend change to the pre-grant opposition system at this stage. Instead it recommended that IP Australia continue to monitor and review the opposition processes both locally and abroad to identify whether there is any convincing reason for change from the existing pre-grant opposition process.