IP Australia has published an exposure draft of an Intellectual Property Laws Amendment Bill 2017 and the proposed accompanying regulations, explanatory memorandum and statement. So that everyone at IP Australia has something to do when they come back from their summer hols, you have to get your comments in by 22 January 2017.
A large part of the changes seem to be about aligning the administrative processes under the different statutory regimes According to the EM:
The patents, trade marks, designs and plant breeder’s rights (PBR) systems have a number of different administrative processes and rules specific to each IP right. A number of these differences are unnecessary or too onerous. Some processes take too long to resolve. This needlessly increases complexity, uncertainty and cost for users of the IP system.
This Bill will align and streamline the processes for obtaining, maintaining and challenging IP rights. Using similar processes for the different IP rights will make the IP system simpler and assist businesses dealing with more than one right. A simpler IP system will decrease administration costs for the Australian Government and reduce the regulatory burden for businesses that use it. The Bill will also enable greater use of electronic systems to manage and monitor IP rights.
A laudable objective! But, there are some 23 Parts and 596 items in the exposure draft bill alone. However, lots of them are plainly necessary changes such as replacing “reject” with “refuse” in the PBR Act, but there are others which will have more impact.
Overall, the broad topics addressed are:
- Part 1 relating to renewals and terminology
- Part 2 relating to re-examination and re-consideration
- Part 3 relating to extensions of time
- Part 4 relating to written requirements
- Part 5 relating to the filing requirements
- Part 6 relating to Official Journals
- Part 7 relating to amendments of applications or other documents
- Part 8 relating to signature requirements
- Part 9 relating to computerised decision-making
- Part 10 relating to addresses and service of documents
- Part 11 relating to examination of patent requests and specifications
- Part 12 relating to requirements for patent documents
- Part 13 relating to acceptance of trade mark applications
- Part 14 relating to registration of designs
- Part 15 relating to unjustified threats of infringement
- Part 16 relating to ownership of Plant Breeder’s Rights and entries in the Register
- Part 17 relating to trade mark oppositions
- Part 18 relating to seizure notices
- Part 19 relating to publishing personal information of registered patent or trade marks attorneys
- Part 20 relating to (criminal) prosecutions
- Part 21 relating to the Secretary’s role in the Plant Breeder’s Rights Act
- Part 22 relating to updating references to Designs Act
- Part 23 abolishing the Plant Breeder’s Rights Advisory Committee.
I have no hope of trying to cover all that. Some of the things that caught my eye:
Part 15 introduces substantive changes to “unjustified threats”. The provisions in the Trade Marks Act will be amended to remove the defence of bringing infringement proceedings with due diligence. This will bring the trade marks regime in line with that for patents, designs and copyright. A corresponding regime is to be introduced for PBR.
Part 15 will also introduce a right for a victim of an unjustified threat to seek additional damages. What will be a flagrantly unjustified threat should be fun to explore. Curiously, this remedy is not proposed for copyright.
Part 13 proposes to reduce the period for acceptance of a trade mark, but expand the grounds for deferment. Items 421, 423 and 425 of the exposure draft regulations propose to reduce the period under reg. 4.12 from 15 months to 9 months after an adverse first report. However, item 427 inserts a new ground for deferring acceptance on the basis that:
(1A) The Registrar may, at the request of the applicant in writing, defer acceptance of an application for registration of a trade mark if:
(a) the request is made within the period applicable under regulation 4.12 or that period as extended under section 224, 224B or 224C of the Act; and
(b) the Registrar reasonably believes that there are grounds for refusing the application under section 41 or 177 of the Act; and
(c) the applicant is seeking to gather documents or evidence as to why the applicant considers there are no grounds for so refusing the application.
For renewal and re-examination (Part 2), apparently, it is possible to request examination of a registered design even after it has already been examined and certified. A formal re-examination process will be introduced. A re-examination regime is also proposed for PBR. The regimes for re-examination of patents and trade marks will also be clarified.
For re-examination (Part 3)
The EM says there are three broad issues with the current regimes:
> There are three broad issues with the extension of time system. The first issue is the differences in the number and types of extensions available between the IP rights. This increases complexity and confusion as to which extension is applicable and what evidence is required for supporting the request in a given situation. The second issue is the administrative burden placed on customers and IP Australia. Short extensions rarely have a significant impact on third parties, yet require the same declarations from applicants and assessment by IP Australia as long extensions. The third issue is that the protection for third parties that used an invention or trade mark while the IP application or right was lapsed or ceased can be inadequate or burdensome to obtain.
The EM then says the main changes are:
- repeal the ‘despite due care’ extension for patents;
- remove the Commissioner’s and Registrar’s discretion for all general extensions, for all rights. This will
- simplify the process and ensure compliance with the Patent Law Treaty and Patent Cooperation Treaty;
- require all requests for extensions to be filed within two months of the removal of the cause of the failure to comply, to ensure there are no unreasonable delays;
- improve the compensation for third parties that use inventions when a patent lapsed or ceased to reduce the burden on third parties;
- expand the protection against infringement for third parties that use a trade mark while it was ceased to include while a trade mark application was lapsed;
- introduce a streamlined process for short extensions, but ensure IP Australia can review and remake a decision on an extension of time;
- prevent applicants from obtaining consecutive ‘short’ extensions for the same action;
- provide general extensions and corresponding third party protection for PBRs.
Part 6 plans repeal of the requirements to publish information in the Official Journals, replacing them instead with an obligation to publish some information on the website or other electronic means.
Part 7 plans changes to the processes for amendments of information entered on the Registers and in documents. Perhaps alarmingly, these include plans to allow rights owners to make some changes to the Registers themselves!
Part 9 proposes introducing the potential for computerised decision making. An example of what is intended is the situation where an application has been accepted and the opposition period has expired without an opposition being filed. In such a situation “the computer” will “decide” to grant the right (presumably after,checking the fee has been paid). This seems intriguing, but you will have to go to a proposed legislative instrument to find out what decisions can be (have been) automated.
No doubt there will be something else to meet your curiosity lurking in the details!
You can find links to the exposure draft documents here. Remember though, get your submissions by 22 January 2017.
- Of course, in line with the existing provisions for additional damages for infringements, it may be possible to “score” even if the threat itself is not flagrant. ?
- It can’t be because copyright falls under a different department because the exposure draft amends the Copyright Act to allow for electronic notifications (“notice” is also deprecated in this new simplified regime) relating to customs seizures – see Part 18. ?