Intellectual Property Laws Amendment (Raising the Bar) Bill 2011

Exposure draft legislation amending Australian IP legislation was released for public viewing on Wednesday. The draft legislation is currently titled Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. You can find a copy of the draft Bill and explanatory memorandum here.

The reforms proposed in the legislation amend the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003 and Plant Breeders Rights Act 1994. In this eAlert! we highlight some of the key proposed changes.

Patents

The reforms proposed in the draft Bill are intended (among other things) to bring Australian law into line with major overseas patent systems, including in the UK and USA, and include:

  • expanding the common general knowledge available for assessing whether an invention is sufficiently inventive or innovative to now include information known outside Australia
  • amending the test for inventive step to remove the requirement that prior art information be reasonably expected to have been "ascertained, understood and regarded as relevant" by a person skilled in the relevant "art"
  • replacing the requirement that claims be "fairly based on the matter described in the specification", with a requirement that they be "supported by" that matter
  • increasing the exemptions to infringement to include use for experimental purposes, and use for obtaining regulatory approval in all fields of endeavour (in addition to the existing exemption for pharmaceutical patents)
  • extending "secret use" exclusions to the effect that any use of an invention within Australia, within 12 months of filing a complete patent application, is not secret use
  • requiring a specification to disclose a "specific, substantial and credible use for the invention"
  • requiring any provisional or complete application to disclose the invention in a manner "which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art"
  • allowing prior use to be considered during examination in relation to novelty and inventive step
  • requiring usefulness be investigated during examination of both standard and innovation patents
  • increasing standards of proof for acceptance or re-examination of, or opposition to patents, or certification of innovation patents by allowing the Commissioner of Patents (Commissioner) to refuse a patent where it is unlikely to be valid
  • prohibiting amendments where they would result in the specification claiming or disclosing matter that extends beyond that disclosed in the specification as filed
  • provision for the Commissioner to conduct a preliminary search and opinion in relation to filing of a standard complete patent application.

Trade Marks

In the trade mark sphere, the proposed amendments include:

  • provision for the award of additional damages, including for flagrant infringement
  • reform of the opposition system including:
    • removing the requirement to serve a notice of opposition on an applicant
    • a proposed requirement to file of a statement of particulars of opposition grounds
    • introduction of a regime in which an applicant must file a notice of intention to defend an opposition or its application will lapse.
  • shifting the benefit of the doubt in favour of the applicant in respect of borderline "descriptiveness" issues on examination
  • introduction of a revised Customs seizure scheme with the aim of preventing infringing importers from avoiding infringement proceedings through avoidance of contact with the objector. A similar revision will apply in respect of the Copyright Act 1968 seizure scheme
  • introduction of summary offences for trade mark infringement.

Simplifying the IP system

Proposed amendments aimed at clarifying or simplifying the legislation governing various IP systems include:

  • clarifying that the grace period for patents applies in respect of complete, and not provisional, applications
  • preventing patents from being found void where granted to the wrong person
  • limiting the availability of omnibus patent claims.

What happens next?

IP Australia is calling for public submissions in relation to the draft Bill until 4 April 2011. The submissions made by Middletons in the consulting phase for this legislation have been adopted in the draft Bill.

Following the close of the current public consultative phase, the Bill will be amended in light of any further submissions, and it is intended that it be introduced into Parliament in the Winter session.

We will continue to keep you informed of developments.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.