Designs

Productivity Commission Response No 2

Parliament has now passed the wonderfully named Intellectual Property Law Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019. Text here[1] and EM here.

When enacted, the “Act” will amongst other things:

(a) insert an objects clause, new section 2A, into the Patents Act:

The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.

That clears things up nicely doesn’t it?

(b) suppress the granting of more “innovation” patents;

(c) harmonise the regimes for Crown use of patents and registered designs;

(d) introduces a revised regime for compulsory licensing of patents.

The suffocation of innovation patents will be achieved by introducing new sub-section 52(3) into the Patents Act.

Sub-section 52(3) will make it a requirement of the formalities check that the date of the patent (if granted) must be a date before the date the amendment came into force.

According to the form of the “Act” on Parliament’s website sub-section 52(3) will come into force 12 months after the “Act” receives Royal Assent.[2]

Once the sub-section comes into force, therefore, it will be possible to seek further innovation patents only where they are based on filings with a date before the commencement date so, for example, a divisional application.


  1. The bill does not become an Act until it receives the Royal Assent.  ?
  2. There had been reports that the phase out period would be extended to 18 months, but that does not appear to be reflected in the document on Parliament’s website. These reports also indicated that there was to be a review of the impact of “abolition” on Australian small and medium enterprises.  ?

Productivity Commission Response No 2 Read More »

Registered Designs consultation

IP Australia has started consultations on policy issues to implement the accepted recommendations arising from ACIP’s 2015 Report. There is also “a more holistic review of the designs ecosystem, as part of the Designs Review Project”, but these proposals don’t relate to that.

In an interesting development, IP Australia has prepared a quick video overview.

There are three “key” topics as part of the current review:

  1. Examining the scope of design protection
  2. Early flexibility for designers
  3. Simplifying and clarifying the designs system

IP Australia’s website summarises the topics addressed by Examining the scope of design protection as including:

  • whether it should be possible to seek protection for partial designs;
  • whether screen displays, screen icons and GUIs should be protectible as designs; and
  • how s 19 works.

Early flexibility for designers addresses matters such as:

  • introducing a grace period;
  • delaying publication of design applications so that they can be synchronised with launch dates;
  • and getting rid of the pointless “publication” option.

Simplifying and clarifying the designs system trots out yet again the “technical” proposals to simplify and clarify the system. While previously these proposals were going to be the subject of a bill, now:

IP Australia seeks any views on these proposals, including their relative priorities, to help understand how and when they should be progressed.

If you want to contribute a submission, you should do so by 20 December 2019

Registered Designs consultation Read More »

Repeal of s 51(3)

The bill repealing (amongst other things) s 51(3) of the Competition and Consumer Act did get passed and has received royal assent.

The repeal takes effect on 13 September 2019.

So, if you thought you were relying on s 51(3)’s protection, you have a bit less than 6 months to get your house in order.

Your licences and assignments of IP rights probably will not get you into trouble for the most part unless you have market power. But that is not exactly a hard and fast rule so you should discuss your arrangements with your lawyers ASAP.

As discussed in this post, one area of potentially significant concern is where the IP holder has its own retail outlets and also licenses other retail outlets – e.g. not uncommon for franchisors who have their own outlets and franchisees. There is a concern that may give rise to criminal cartel conduct.

If you want to know about the prohibitions on cartel conduct, Ian Wylie has published a paper “Cartel conduct or Permissible Joint Venture?

On Tuesday, the ACCC also announced it hopes to publish draft guidelines by “mid-2019” and finalise them before 13 September. Amongst other things, these proposed guidelines will outline:

how the ACCC proposes to investigate and enforce Part IV in relation to conduct involving intellectual property rights. They will also provide hypothetical examples to illustrate conduct that the ACCC considers is likely or unlikely to contravene Part IV.

Repeal of s 51(3) Read More »

Cartel conduct and IP licences and assignments

Will your assignments and licences of intellectual property, such as in a typical franchise agreement, expose your client to liability for cartel conduct or will you be ready to apply for an authorisation?

One of the bills pending before Parliament contains the long pursued (by the ACCC) repeal of s 51(3) of the Competition and Consumer Act 2010.

Section 51(3) exempts from most of the prohibitions in Pt IV of the Competition and Consumer Act terms and conditions in assignments and licences of intellectual property which most of us take for granted.

The rationale for repeal is that most transactions involving IP do not have anti-competitive effects or purposes and, if they do, they should not be exempt from the competition laws.

Rodney De Boos, a consultant at DCC with many years’ experience in licensing and commercialisation of IP, however, points out that this explanation was developed before the provisions banning cartel conduct were introduced into the Act. And, he contends, typical arrangements in IP agreements which allocate, for example, territories or customers will constitute cartel conduct and so need authorisation if the parties are not to be in breach of the cartel provisions.

As Rodney explains, a cartel provision are certain types of specified provisions between competitors.

Now, it may well be that an assignor and assignee, or a licensor and licensee, will not be competitors. There are many types of arrangements, however, where the Competition and Consumer Act will deem them to be competitors. An obvious example is the case of a franchisor who has retail outlets (either itself or through a related body corporate) as well as retail franchisees. Other arrangements involving IP could also be similarly problematical.

You can read Rodney’s concerns in more detail here.

The bill repealing s 51(3) has already passed the House of Representatives and is due to be debated by the Senate in the sittings coming up.

Cartel conduct and IP licences and assignments Read More »

Hague consultations – outcome

IP Australia has published a report on the results of its consultations on the economic consequences of Australia joining The Hague Agreement for the international registration of industrial designs.

In short, there’s a bit of minor tweaking, but the outcome is pretty much the same. The revised best estimate:

  • net benefit to Australian designers is $3 million (up from $1.7 million)
  • net cost to Australian consumers is $39.7 million (down from $58 million)
  • net cost to Australian IP professionals is $2.5 million (unchanged)
  • net cost to the Australian Government is $2.8 million (unchanged).

Perhaps one of the most interesting aspects of the report is an analysis of all infringement court cases involving patents, trade marks or registered designs since 2008:

Rate of infringement cases by registered IPR

There have been far less design infringement cases but, having regard to the number of registered designs, litigation is in approximately the same proportion as trade mark infringement cases,[1] but approximately only one third the rate of patent litigation.

Another surprising aspect: the New Zealand Intellectual Property Association also made submissions – which appear to have been rather influential – which strongly opposed Australia joining the Hague system.

Finally, the report is at pains to say that the costs benefit analysis of joining Hague is only one factor being considered. Anyone want to put money on Australia joining (before we sign up to anothere one-way trade agreement with, this time, the EU)?


  1. The report gets a bit over-excited by the high proportion of certified designs which get litigated – well, duh!  ?

Hague consultations – outcome Read More »

Productivity Commission implementation part 2

IP Australia has released draft legislation for the proposed Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2018.

Schedule 1 of the proposed bill includes measures to:

  • amend inventive step requirements for Australian patents (to bring them into line with the imagined approach of the EPO;
  • introduce an objects clause into the Patents Act 1990
  • phase out the abomination innovation patent system.

Well, 1 out of 3 is not so bad.

Schedules 2 – 4 propose the mooted amendments to the Crown use provisions (both patents and designs) and the compulsory licensing provisions.

There are also streamlining measures and “technical improvements” in schedules 5 to 7.

Download the draft bill, the draft EM and consultation questions from here.

Written submissions are due by 31 August 2018.

Productivity Commission implementation part 2 Read More »

IP Laws Amendment ( Productivity Commission Response Pt 1 etc) Bill 2018

On May 10, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 was referred to the Senate’s Economics Legislation Committee.

You may recall that, amongst other things, the Bill has another go at parallel imports and trade marks (which also entails repealing s 198A of the Copyright Act 1968), reduces the period before registered trade marks can be attacked for non-use, permits non-PBR-protected varieties to be declared as essentially derived varieties and a host of other reforms (Sch. 2 has 21 Parts)

The Senate committee is required to report on the bill by 22 June 2018.

If you are an agricultural organisation, medical research industry, an IP peak body (who is not going to INTA) or somehow at a loose end, you need to get your skates on as submissions must be made by 1 June 2018.

IP Laws Amendment ( Productivity Commission Response Pt 1 etc) Bill 2018 Read More »

The Hague Agreement: a cost benefit analysis

IP Australia has published a cost benefit analysis for Australia joining the Hague Agreement for registration of designs.

You are no doubt thinking that sounds very exciting (not). But, even if you are not into registered designs, you SHOULD READ IT. This is the Government’s first attempt at applying the Productivity Commission’s call for any proposals to reform intellectual property laws to be economically justified. As the Report says in the first paragraph of the Executive Summary:

The report assesses the impacts [i.e., the costs and benefits to Australia of joining the Hague Agreement] with reference to the Productivity Commission’s (PC) guiding principles of effectiveness, efficiency, adaptability and accountability. This report is intended to form part of the evidence base in relation to whether Australia should join the Hague Agreement.

So, unless it involves an acronym that is like TPP, this could well be a harbinger of things to come.

And what does it conclude find:

  • IP Australia’s best estimate of the net benefit for Australian designers is $1.7 million;[1]
  • IP Australia’s best estimate of the net cost to Australian consumers from higher prices resulting from the longer term of design protection is $58 million;[2]
  • to add a little bit more spice to the debate, IP Australia’s best estimate of the net cost to Australian IP professionals is $2.5 million;[3] and
  • IP Australia’s best estimate of the net cost to the Australian government of implementing new systems etc. to comply with Hague is $2.8 million.[4]

The big question IP Australia is asking you is how realistic are these estimates?

Now, in arriving at these numbers, the Report does include quite a lot of hard data.
For example, most Australians who file designs overseas do so in the EU, the USA, NZ and China. On the other side of the coin, most incoming design registrations were from the USA, the EU, Japan, NZ, Switzerland and China.[5]

On the other hand, the Productivity Commission reported that less than 20% of registered designs are renewed beyond the first 5 year term.[6] According to IP Australia, however, approximately half of all design registrations are renewed for the second 5 year term and non-residents are more likely to renew than Australians.[7]

Will we become better at designing if we “stick” with our current settings – 19th out of the top 40[8] – or should we “twist” and sign up? Of course, there is an anterior question: do we even care about good design in the first place?

IP Australia is seeking feedback on its cost-benefit analysis and its proposed methodology to elicit additional evidence and views with the aim of finalising the analysis in 2018. You should get your say in by 31 May 2018.

The Hague Agreement Concerning the International Registration of Industrial Designs: A cost-benefit analysis for Australia March 2018


  1. This represents the costs savings from the simplified application procedure and the increased profits from taking new designs overseas. IP Australia estimates the range of benefit is from $0.03 million to $6 million.  ?
  2. This represents how much Australian consumers would pay to overseas owners of registered designs if the term of a registered design was extended from 10 years (currently) to the minimum 15 years required under Hague. IP Australia estimates a resulting range of net outflows from $23 million to $114 million.  ?
  3. IP Australia anticipates that “IP professionals” will garner some extra work at the examination stage but will lose work at the filing stage as the Hague Agreement provides for one central application to WIPO rather than multiple individual application to each separate jurisdiction. IP Australia estimates a range from a benefit of $0.3 million to a cost of $12 million.  ?
  4. The Government (presumably that means IP Australia) will incur costs between $2.3 and $3.4 million in upgrading its IT systems.  ?
  5. Report p. 10. It’s not clear from this part of the Report whether Australian applicants filed in all, some or only one of those destinations.  ?
  6. Productivity Commission, Intellectual Property Arrangements: Final Report, p. 337. These were the figures from ACIP as at 2013.  ?
  7. Report p. 11. In 2010, 66% of non-residents renewed. How the discrepancy between the Productivity Commission’s figures (i.e.,
    ACIP’s figures) came about is not clear.  ?
  8. Report Appendix 3 table 4.1.  ?

The Hague Agreement: a cost benefit analysis Read More »

Government consultation papers on patent and trade marks

Government consultation papers on patent and trade marks

Government consultation papers on patent and trade marks

The Australian government has issued 5 consultation papers on how to implement some of the recommendations it has accepted from the Productivity Commission’s Final Report into Intellectual Property Arrangements:

Submissions are required by 17 November 2017 (with a view to introducing a bill as soon as possible).

I can’t say that introducing yet another inventive step test (there are 4 if you count common general knowledge alone – depending on which regime applies to the patent in question) makes much sense.

Most of the Productivity Commission’s reasoning was based on the common general knowledge alone test used in Alphapharm.1 It did find, however, that there had not been much change in the Commissioner’s rate of granting patents relative to the EPO since the Raising the Bar act was passed. However, so far as I could see, it doesn’t tell us how many applications the Commissioner had examined under the Raising the Bar regime and you would have to guess a large number were still under the 2001 regime.2

Essentially, the Raising the Bar regime allows any piece of prior art to be combined with common general knowledge to test obviousness. It also allows prior art information to be combined in the same way as one might expect an English court or an EPO board would.3 The Raising the Bar regime should in fact operate just like the UK/EPC regime and one would have thought we should give it a good chance to work!

  1. See e.g. the reliance on Angiotech Pharmaceuticals v Conor Medsystems Inc. [2007 EWCA 5 at [43]. ??
  2. The Merial case is the only judicial consideration I am aware of applying the regime introduced in 2001 but, if you know of others, let me know. ??
  3. See e.g. KCI Licensing v Smith & Nephew [2010 EWCA Civ 1260 at 6. ??

 

Government consultation papers on patent and trade marks Read More »

Unregistered design or registered design – UK

Over at the IpKat, Darren Meale has an extensive post explaining some of the intricate differences that arise when litigating an UK unregistered design right versus a registered design right. As he explains:

But UKUDR is quite powerful. As noted above, a designer can essentially make up what it says its rights are once it has seen an alleged infringement appear on the market, and it can lawfully do so in an immensely complex way. Only robust case management can deal with the menace….

Definitely well worth reading!

The case is Neptune v DeVol Kitchens [2017 EWHC 2172 (Henry Carr J)

Unregistered design or registered design – UK Read More »