That Bill was the subject of consultations noted earlier this year and is meant to "make improvements to IP rights legislation to better meet the objectives".
Amendments in the Bill cover the Patents Act 1990 (Cth), the Trade Marks Act 1995 (Cth), the Copyright Act 1968 (Cth), the Designs Act 2003 (Cth) and the Plant Breeder’s Rights Act 1994 (Cth), corresponding to six schedules -
S1 - Raising the quality of granted patentsThe 150 page Explanatory Memo outlines the Bill as follows -
S2 - Free access to patented inventions for regulatory approvals and research
S3 - Reducing delays in resolution of patent and trade mark applications
S4 - Assisting the operations of the IP profession
S5 - Improving mechanisms for trade mark and copyright enforcement
S6 - Simplifying the IP system
Schedule 1: Raising the quality of granted patents
In order to meet its objective of supporting innovation, the patent system must strike a balance. It must provide sufficient protection to reward innovation, but not so much protection as to block future or follow-on innovation. Concerns have been raised that the thresholds set for the grant of a patent in Australia are too low, suppressing competition and discouraging follow-on innovation. Particular concerns have been raised that patents are granted for inventions that are not sufficiently inventive, and that the details of inventions are not sufficiently disclosed to the public.
These concerns were recognised in the 2008 review of the national innovation system Venturous Australia and the Government’s response to this review: Powering Ideas: the innovation agenda for the 21st century.
The Bill amends the Patents Act to address four key areas of patentability.
First, the Bill amends the Patents Act to remove restrictions on the information and background knowledge taken into account when assessing whether an application is sufficiently inventive to justify a patent. This will raise the standard set for inventive step in Australia to a level that is more consistent with standards set in our major trading partners.
Secondly, the amendments bolster the requirement that a patented invention be useful: that is, that the invention works in the way that the patent says it does and that the specification explains how the invention works. The amendments strengthen this requirement to prevent the grant of patents for speculative inventions that require too much further work before they can be put into practice.
Thirdly, the Bill raises the standards set for disclosure of an invention. A patent is a compact between an inventor and the state: in exchange for a time-limited exclusive right to exploit an invention, a patentee must give the public sufficient information to make and use the invention. In this way the patentee is rewarded for what they have done and the public has access to the information necessary to conduct follow-on innovation and to make and use the invention once the patent has expired. The amendments address circumstances where the information disclosed in a patent specification, although sufficient to make one thing within the scope of each claim, is not sufficient to make the invention across the full scope of each claim. The changes ensure that granted patents are no broader than the invention which has been disclosed.
Fourthly, the Bill amends the Patents Act to increase certainty in the validity of granted patents. Currently, the Commissioner is limited in the grounds she can consider when deciding whether to grant a patent, or whether to revoke a patent after re-examination. In contrast the courts can consider a wider range of grounds. As a consequence, a patent correctly granted by the Commissioner may be subsequently found invalid by the courts. The change will expand the grounds that the Commissioner can consider, and apply a consistent standard of proof across all grounds, so that the Commissioner is not obliged to grant patents which would not pass scrutiny in a court challenge.
Schedule 2: Free access to patented inventions for regulatory approvals and research
The patent system grants exclusive rights to commercialise and exploit inventions free of competition. Research, as such, does not affect this. However, currently there is no statutory provision clarifying researchers’ freedom to conduct experiments and there is uncertainty about the scope of any existing common law protection. This leads to inefficiencies in research. Researchers are discouraged from taking up new lines of research where there is uncertainty about their liability for patent infringement. Uncertainty also leads to researchers expending effort and expense on seeking advice, where they have concerns about how their experiments intersect with the patent system.
The Bill amends the Patents Act to draw a line between research and commercial activities, leaving researchers free to conduct their experiments without worrying about the patent system. The amendments are designed to clarify that research and experimental activities relating to patented inventions are exempt from infringement, whereas commercial activities are not. The intent is to give broad and clear protection to research and experimental activities in order to maximise the potential for research in Australia.
The Bill also introduces an exemption for activities undertaken solely for the purpose of gaining regulatory approval to market or manufacture a patented technology. This expands the existing exemption for pharmaceutical inventions to all technologies; recognising that technologies other than pharmaceuticals may also suffer delays in bringing products to market as a consequence of lengthy pre-market and pre-manufacturing regulatory approval processes.
Schedule 3: Reducing delays in resolution of patent and trade mark applications
The patent and trade mark systems also need to strike a balance between giving sufficient time to get applications in order for grant or registration and minimising delays in giving certainty about whether a right will be granted, and what scope that right will have.
Two elements of the current patents and trade marks systems, in particular, lend themselves to lengthy delays in applications proceeding to grant or registration. These are patents and trade marks opposition proceedings and divisional patent applications (which occur when part of an application is divided out into a new application). Currently opportunities exist for a party, usually an applicant but sometimes also a competitor, to substantially delay finalisation of these elements. Delay may suit the party, but it is not in the interests of the public, or the party’s competitors.
The Bill amends the Patents and Trade Marks Acts to refine opposition proceedings to better meet their intended purpose as a means for settling disputes quickly and inexpensively. The Bill also amends the Patents Act to tighten the timeframes within which divisional applications can be filed, reducing opportunities for abusive use of these types of application.
Schedule 4: Assisting the operations of the IP profession
Patent and trade mark attorneys play a valuable role in assisting businesses and innovators to negotiate the IP system and protect their good ideas. Currently, there are anomalies between the ways in which patent and trade mark attorneys can conduct their business and the ways in which other professionals can operate, specifically the legal profession. The Bill amends the Patents and Trade Marks Acts to allow attorneys to incorporate and to extend to client-attorney communications the same privilege as currently exists for communications between a lawyer and their client. The changes will help patent and trade mark attorneys deliver professional high quality services to their clients.
Schedule 5: Improving mechanisms for trade mark and copyright enforcement
Effective enforcement of trade marks and copyright is a significant issue for rights owners, who have worked to establish their brand in the marketplace and do not want to see others take unfair advantage of their hard work. Stakeholders have raised concerns that the penalties for trade mark counterfeiting are lower than those for copyright infringement and insufficient to deter infringers. Concerns have also been raised that the current system for confiscating imported counterfeit trade mark and copyright goods is inadequate. The Bill amends the Trade Marks and Copyright Acts to bolster the penalties for trade mark infringement and to improve the system for confiscating counterfeit goods.
Schedule 6: Simplifying the IP system
An ever present challenge for the IP rights system is to balance the level of complexity necessary to ensure a robust system with the need for the system to be accessible and cost effective to a wide range of users.
The Bill amends the Patents, Trade Marks, Designs and Plant Breeder’s Rights Acts to implement a number of fixes to the system to remove procedural hurdles, streamline processes and make improvements to ensure that the system is fit for purpose in an increasingly electronic and globalised business environment.