The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 was tabled in the Australian Parliament (House of Representatives) today. The IP Laws amendment Part 1 is directed to a number of recommendations from the Productivity Commission, and was expected to include the highly controversial phasing out of the innovation patent system as well as regular trade mark, plant breeder’s rights and technical reforms. However, legislation enabling the abolition of the innovation patent was noticeably absent from the bill. Given the goals of the National Innovation Science Agenda, it seems possible that the vocal opposition to dismantling Australia’s second tier patent system may actually result in reform to support SME innovation, and maybe even the retention of a second tier patent in Australia.

The regular cycle of intellectual property amendments intended for implementation through the draft IP Laws Amendment Bill 2017 was put on hold last year following the Productivity Commission report into Australia’s intellectual property system. The Australian parliament will consider successive bills this year implementing these reforms as well as Productivity Commission –recommended reforms.

  • IP Laws Amendment Part 1 Bill was understood to be directed to phasing out of the innovation patent system, recommendations from 2017 relating to plant breeder’s rights trade marks reforms recommended by the Productivity Commission as well as technical reforms.
  • IP Laws Amendment Part 2 Bill will apparently deal with inventive step reforms, introducing an objects clause into the Patents Act 1990, changes to Crown use, compulsory licensing of patents and designs and some further technical issues.
  • The remaining reforms from the draft IP Laws Amendment Bill 2017 have been put on hold pending the outcome of the first bills.

The consultation period for the above reforms closed on the 4 December 2017. 19 non-confidential submissions were received. Today, the IP Laws Amendment Part 1 Bill was introduced into Parliament with the following reforms:

  • clarification of when parallel importation of trade marked goods does not infringe a registered trade mark (PC recommendation 12.1(c));
  • expansion of the scope of essentially derived variety declarations in the Plant Breeder’s Rights Act (PBR) (PC recommendation 13.1);
  • reduction of the grace period for filing non-use applications under the Trade Marks Act (PC recommendation 12.1(a));
  • repeal of section 76A of the Patents Act,which requires patentees to provide certain data relating to pharmaceutical patents with an extended term (PC recommendation 10.1);
  • amendments to allow PBR exclusive licensees to take infringement actions, and for the award of additional damages under the PBR Act (previous IP Law Amendments); and
  • streamlining of a number of processes for the handling of IP rights and some slight technical amendments (writing, filing requirements, address for services, computerised decision making).

A more detailed list of the reforms and what is on hold can be accessed here. Explanatory Memoranda and bill text are accessible here.

Keeping the Innovation Patent?

In the IP Australia response to the submissions opposing abolition of the innovation patent, it was said that the Government had decided to abolish innovation patents and that consultation would be undertaken towards implementation of that decision. Since that time there has been ongoing lobbying from the innovation sector to try to overturn the Government’s decision widely regarded as a backward move.

IP Australia has announced today that:

The Government has decided to undertake further industry consultation targeted at better understanding the needs of innovative SMEs before the phase out of the innovation patent occurs.

It is hoped that reforms of the Innovation Patent will be considered (innovative step, mandatory examination, limiting damages periods or others) as an alternative to losing the second-tier patent which has existed in Australia since 1979. If the patent species is abolished, Australia will be out of step with other major technology jurisdictions such as Japan and Germany, as well as the UK which is presently considering implementing a shorter form of patent right as an economic benefit to the country.