Archive for the ‘PBR’ Category

Intellectual Property Laws Amendment Bill 2014

Thursday, March 20th, 2014

After the consultation, the Intellectual Property Laws Amendment Bill 2014 has been introduced.

  • Schedules 1 and 2 aim to implement the TRIPS Protocol:

    According to the EM:

    Under the new scheme, Australian laboratories will be able to apply to the Federal Court for a compulsory licence to manufacture generic versions of patented medicines under specific conditions, and export these medicines to developing countries. Adequate compensation for the patent holder will be negotiated, to ensure that they are not disadvantaged by the arrangements.

    Schedule 1 introduces provisions to implement the “interim waiver” agreed in the Doha Declaration 2001; Schedule 2 implements the TRIPS Protocol regime agreed in 2003 (or, I think, 2005).

    According to the EM, only one licence has been issued under these regimes – Canada in 2007. Apparently, Canadian generics would like to engage in further licensing, but the procedures are too complicated. Also, Least Developed Countries do not need to provide patent protection until 2016 and there is said to be a lack of awareness of the regime.[1]

  • Schedule 3 confers jurisdiction over plant breeder’s rights matters on the Federal Circuit Court (in addition to the Federal Court)
  • Schedule 4:
    • introduces the “single examination” model for patent applications in Australia and New Zealand;[2]
    • the single regulatory regime for patent attorneys and trade mark attorneys in both countries – the so-called trans-Tasman regulatory regime; and
    • provides for a single address for service in either Australia or New Zealand to be used under the patents, trade marks, registered designs and plant breeder’s rights legislation.
  • Schedule 5 is headed “Technical Amendments” which include repealing “unnecessary document retention provisions” and addressing “minor oversights in the drafting of” the Raising the Bar Act. These include:
    • amending s 29A so that an international applicant under the PCT cannot require anything to be done in Australia until the application enters the national phase;
    • amending s 29B so that only the prescribed period under s 38(1A) applies to Paris Convention applications;
    • amending ss 41 and 43 in relation to disclosure requirements for micro-organism inventions
    • amending s 43 to permit reference to the combination of prescribed documents, not just to individual prescribed documents alone
    • the defence in s 119(3)(b) will be amended to bring it into line with the amended form of s 24(1)(a)
    • amending s 191A so that the requirement for the Commissioner to hear both parties prescribed in s 191A(4) applies only in entitlement disputes.

Intellectual Property Laws Amendment Bill 2014

Explanatory memorandum


  1. The Regulatory Impact Statement included in the EM estimates that 63 in-house legal professionals and 128 patent attorneys in external firms will need to familiarise themselves with these changes for a total start up cost to business of $13,782.60 and an ongoing annual cost of $105. These costs include allowance for savings in legal costs because it will be possible to bring proceedings for infringement of plant breeder’s rights in the Federal Circuit Court, rather than the Federal Court. Perhaps confusing costs with earnings, the Regulatory Impact Statement relies on the ABS Employee Earnings and Hours Survey to estimate the average cost of patent and trade mark attorneys as $50 per hour (junior solicitors $60 per hour, IP attorneys $74.10 per hour and barristers $92.70 per hour, after including a 50% loading for overheads). The Statement does recognise that charge out rates “for lega”for legal professionals can range from $120 per hour to $800 per hour or more, viewed on 4 December 2013 at http://www.legallawyers.com.au/legal-topics/law-firm-sydney/solicitor-prices/. These costs do not reflect the opportunity cost of labour.” You may also be interested to know that the Regulatory Impact Statement estimates the costs of an application to the Federal Court for a licence at around $21,650 for the applicant.  ?
  2. The substance of the two countries’ respective patent laws is not being harmonised (yet).  ?
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Securities over IP

Thursday, January 23rd, 2014

IP Australia has published a reminder:

The transitional period to register any securities (charges, mortgages etc.) you may have taken out over IP ( registered trade marks, patents, designs etc.) on the Personal Property Securities Register expires on 31 January 2014.

The Personal Properties Security Register is a national register of claims to security interests over personal property (which includes our imaginary subject matters) in essence to provide a one stop shop for notice about such claims.

If you (or your client) has taken out a security over someone else’ intellectual property or where the other person’s intellectual property is being used as collateral for repayment, the security should be registered on the Personal Property Securities Register. In very broad terms: if the security isn’t registered in the Personal Property Securities Register, its claim to priority over any later security or even enforceability could be lost.

IP Australia’s warning points out that it is not enough to have registered the security interest in a register of IP such as the Trade Marks Register, the Patents Register, the Register of Designs or the Register of PBR. These registrations will not be transferred automatically to the Personal Property Securities Register. Morever, registration of the security interest on one or more of those IP Registers will not take priority over a later registration on the Personal Property Securities Register.

So, if you or your client have taken out such a security and haven’t registered it in the Personal Property Securities Register yet, ‘hurry, hurry, hurry; quick, quick, quick’ (with apologies to Alexis Jordan).

Although IP Australia’s warning relates specifically to the registered IP it administers, the legislation also applies to unregistered IP such as copyright.

IP Australia’s media release.

IP Australia’s general overview of PPS

PPS R.

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Summer must be over …

Friday, January 17th, 2014

IP Australia has released a consultation paper (pdf) (with exposure draft bill (pdf) and draft EM (pdf)) on the proposed Intellectual Property Laws Amendment Bill 2014.

According to the overview, the proposed bill will:

  • implement the Protocol amending the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Protocol – links via here), enabling Australian medicine producers to manufacture and export patented pharmaceuticals to countries experiencing health crises, under a compulsory licence from the Federal Court
  • extend the jurisdiction of the former Federal Magistrates Court, the Federal Circuit Court, to include plant breeder’s rights matters
  • allow for a single trans-Tasman patent attorney regime and single patent application and examination processes for Australia and New Zealand, as part of the broader Single Economic Market (SEM) agenda
  • make minor administrative changes to the Patents, Trade Marks and Designs Acts to repeal unnecessary document retention provisions that are already adequately governed by the Archives Act 1983
  • make minor technical amendments to the Patents Act to correct oversights in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which was passed by Parliament in March 2012.

The proposed bill succeeds the Intellectual Property Laws Amendment Bill 2013, which proved rather more controversial than the former government, or its advisors, expected (see, for example, here (pdf)) and lapsed with the calling of the election.

According to the consultation paper, the proposed bill largely replicates the lapsed bill, but there have been changes in 5 key areas.

The provisions relating to Crown Use in the lapsed bill have been withdrawn and will be the subject of a separate bill in the future.

The provisions to implement the TRIPS Protocol drew much of the controversy. According to the consultation paper, these have been amended in a number of important respects. First, it is proposed that separate applications will be required for each patent that a person seeking a licence to manufacture under the TRIPS Protocol requires. It is hoped that this will address concerns about an imbalance of negotiating power if the patentee of one patent also required access to someone else’s patent(s) to take advantage of the proposed compulsory licence.

Secondly, the proposed compulsory licence will be to exploit the patent for the relevant purpose rather than the more limited “work” the patent.

To preclude the need to change the regulations when (perhaps that should be “if”) there is a change in a country a country qualifies as a permissible import destination, and the notification requirements according to whether the country is a member of the WTO or an LDC, the regulations will refer simply to the relevant lists maintained by the WTO and/or the UN.

Whether these changes will meet the substantive objections raised against the lapsed bill remains to be seen.

Unfortunately, the draft bill fails to address one important oversight from the Raising the Bar Act. The Raising the Bar Act replaced the standard applicable during examination and opposition to the grant of a patent from one of practically certain to be invalid to one of balance of probabilities: see Sch. 1 Part 2 items 39 to 54.

It has not been determined finally what standard applies in trade mark proceedings, although the preponderance of authority in the Federal Court appears to support the “practically certain to be invalid” standard to the examination and opposition of trade marks. See for example NV Sumatra v BAT at [16] – [38]. This position was adopted by analogy to, and for conformity with, the position then prevailing for patents. The reasons why this was changed for patents are equally applicable for trade mark applications. One would think it was high time to address this.

Comments and submissions are required by 7 February 2014.

Links to IP Australia’s documents via here.

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Another IP amendment bill

Thursday, May 30th, 2013

The Intellectual Property Laws Amendment Bill 2013 was introduced into Parliament today.

The changes include:

  • amendments to the Crown use provisions in the Patents Act to ensure they apply where the relevant Commonwealth, State or Territory government has primary responsibility for funding or providing the service and to include a requirement for approval by the relevant Commonwealth, State or Territory Attorney-General
  • implementation of the TRIPS protocol to enable generics to apply to the Federal Court for a compulsory licence to manufacture a patented drug for export to developing countries experiencing a serious public health problem (or, as the EM puts it, a Health Crisis) to which the drug relates
  • conferring jurisdiction over plant varieties rights matters on the Federal Circuit Court (formerly the Federal Magistrates Court)
  • implementation of the Trans-Tasman patent attorney regime (whereby patent attorneys registered in Australia or NZ are entitled to practise in the other country as well)
  • so-called “technical amendments” to ensure that the amendments made by the “Raising the Bar” Act operate as intended.

Intellectual Property Laws Amendment Bill 2013

Explanatory Memorandum

IP Australia’s announcement

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Another plant breeder’s rights case

Monday, March 5th, 2012

This one is on a fairly narrow point: what is the term of rights where the application was made under the old (PVR) act, but registration was not completed until after the new (PBR) act.

Such matters are governed by s 83 of the Plant Breeder’s Rights Act.

Rights granted before the PBR Act commenced have a term of 20 years from acceptance (PBR Act s 82(2) and PVR Act s 32); in contrast, rights granted pursuant to applications filed after the PBR Act commenced have a term of 20 years from grant (except for trees which may have up to 25 years).

Patentology has a report.

Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2012] FCAFC 14 allowing an appeal from

Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2011] FCA 384

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Government responses to ACIP enforcement reviews

Friday, June 3rd, 2011

The Government has announced its responses to ACIP’s reviews of:

On a quick skim, the main recommendation to introduce a Patents Tribunal to determine “IP” disputes has been found non-viable due to the limitations on the Commonwealth’s repository of judicial powers. With WIPO’s arbitration and mediation service in mind, however, IP Australia is to work with alternative dispute resolution providers to provide a new ADR resource. In the PBR context, the Government states that it does not consider it appropriate for IP Australia, as a regulatory agency, to provide post-grant mediation services itself.

The review on PBR has received rather mixed results.

The Government has not accepted the proposal to introduce a “purchase” right.

The PBR Act will be amended to clarify that harvested material which can also be used as propagating material qualifies as propagating material for the purposes of the Act’s prohibitions.

The Government accepts that no changes to the operation of ss 14 and 15 are required.

At this stage, the Government considers that the making of “mendacious” declarations of PBR is adequately covered by the prohibitions on misleading or deceptive conduct in trade or commerce.

Lots of recommendations for more education.

No doubt, you will have your own favourite recommendation(s), but (as I am not a Kat, ip or otherwise) that is all there is time for today!

The Minister’s Getting Tougher on Imitators press release.

ACIP’s “patents” review (pdf).

ACIP’s PBR review (pdf).

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(Not) a case of PBR

Wednesday, May 4th, 2011

Caithness applied for the grant of plant variety rights for the potato variety ‘Nadine’ on 21 May 1992.

That application was accepted by the Registrar on 28 May 1992.

On 10 November 1994, the Plant Breeder’s Rights Act 1994 came into force and repealed the Plant Variety Rights Act 1987.

On 16 August 1995, Caithness’ application for Nadine was granted and certificate 465 was issued.

Under the old Act (the PVRA), the term of a registration was 20 years from the date of acceptance; i.e. until 28 May 2012. The term of registration under the New Act, however, was 20 years from the date of grant; i.e. until 16 August 2015. Elders, Caithness’ exclusive agent for Australia, challenged the Registrar’s conclusion that the term applicable was that under the old Act.

If Nadine had actually been registered before the old Act was repealed, s 82 of the new Act meant it would have the longer term of protection (i.e., measured from the date of grant) conferred by the new Act as if it had been registered under the new Act.

Because Nadine had only been accepted when the new Act came into force, however, Lander J has ruled that it did not fall under s 82, but s 83.

Moreover, the drafting of s 83 led to the ‘unfairness’ that Nadine was only entitled to protection for the term applicable under the old Act; i.e. until 28 May 2012.

His Honour refused to apply the principle in Inco Europe Ltd v First Choice Distribution [2000] UKHL 15 and interpret s 83 as if additional words could be read into it to remedy an obvious drafting error:

85 The additional words which should be read in at the end of s 83 are said to be “save that a successful applicant will be granted PBR pursuant to the provisions of the Act”.

86 Assuming this Court had the power to do what the applicant contends, the Court should decline to exercise the power for two reasons which follow from the reasons for the construction that I have suggested. First, it would mean that an applicant who could not comply with s 44 of the new Act would have to be deemed to have complied otherwise the application would have to be refused. That would require some further words to be notionally added. Secondly, the applicant would obtain rights, being PBR, that s 82 contemplates that an old Act applicant should not be entitled. The applicant would obtain the rights which are specifically excluded in s 82(3) and (4). That would be a very odd result. It would mean that an applicant who had been granted plant variety rights under the old Act would be deemed to be entitled to PBR without the rights in s 82(3) and (4), but an applicant who had made an application under the old Act but who had not been granted any rights would become entitled to PBR including the rights under s 82(3) and (4).

87 This is not a piece of legislation which can be redrawn by the Court. The unfortunate result which the drafting error discloses is a matter for Parliament.

    Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2011] FCA 384

    Patentology’s take

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    Trans Tasman IP harmonising – patents

    Tuesday, February 22nd, 2011

    Prime Ministers Gillard (Australia) and Key (EnZed) have reaffirmed their countries’ respective commitment to closer co-operation in (industrial) IP matters between the two countries as part of the Trans Tasman Single Economic Market.

    Apparently, over the next 5 years our countries will work towards:

    1. one regulatory framework for patent attorneys;
    2. one trade mark regime;
    3. one application process for patents in both jurisdictions; and
    4. one plant variety right regime.

    According to the Statement issued on 16 February, the single application process for patents in both jurisdications will involve 2 stages. In the first stage, “both countries will rely on each other’s work, where possible, to build confidence and simplify processes”. In the second stage, there will be a “single examination process”.

    Apparently, this will not involve changing either country’s patent laws as the Statement explains:

    Examiners will grant or refuse applications under each country’s law. It will not be necessary for our laws to be identical.

    and

    Australia and New Zealand will operate as one integrated patent examination entity in practice – not in law. Both countries will retain flexibility to implement legislation and policies.

    All this is forecast to take 3 years.

    In contrast, streams 2 and 4 envisage one (trade mark or plant breeder’s) regime. That seems to indicate than one or other of our respective trade mark or plant breeder’s laws will need to change because (so far as I understand it – not very far at all, really) EnZed trade mark law is much closer to “modern” (ie. 1994) UK legislation and hence EU rules. Is it too soon to start boning up on ECJ rulings?

    See also here and here.

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    Plant breeder’s rights in the EU

    Wednesday, April 21st, 2010

    The European Court of Justice has dismissed Ralf Schräder’s appeal from the rejection of its registration for plant breeder’s rights in plectranthus ornatus.

    It would seem after detailed genetic testing, including travel to South Africa, the EU regulatory authorities have determined the variety the subject of the application is not distinct from a common South African plant.

    IPKat has a good overview, with links to earlier stages in the dispute, here.

    Case C?38/09 P Ralf Schräder v Community Plant Variety Office

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    Enforcement of PBR in Australia

    Monday, February 1st, 2010

    ACIP has published its final report into the Enforcement of plant breeder’s rights in Australia.

    The report is here (pdf) – be warned 138pp, Exec Summary is 10pp.

    Some recommendations:

     

    Recommendation 1.

    A new “purchase” right be added to s.11. This new right would only apply to those taxa that are specifically declared in the regulations. Industry sectors such as wheat breeders would apply to the PBR Office to have particular taxa so declared.

     

    Recommendation 2.

    The PBR Act be amended to clarify that harvested material that is also propagating material is to be considered as propagating material for the purposes of s.11, even if it is not being used for that purpose.

     

    Recommendation 4.

    There be no change to the operation of farmer’s privilege under s.17.

    However, s.17 should be amended to state in easily understood terms that s.17 does not provide the farmer with the right to perform the acts listed in s.11(a) to (g). For example, the farmer will still require the PBR owner’s authorisation to sell the reproduced propagating material, the harvested material or the product of the harvested material.

    Recommendation 5.

    As part of IP Australia’s education and awareness programs, raise industry awareness of the opportunity under s.17(2) to have specific taxa excluded from the farmer’s privilege exemption.

    Recommendation 6.

    Encourage PBR owners to make clear to growers the conditions of sale of propagating material and their obligations in relation to future generations of it. This includes making clear that growers require the authorisation of the PBR owner to sell crops grown from farm-saved seed.

     

     

    Recommendation 17.
    Introduce an Information Notice system into the PBR Act based on the UK Information Notice system.
    This would enable PBR owners to obtain information from suspected infringers on the
    source of plant material. Where this is not supplied within a reasonable time, legal proceedings may be commenced in which the presumption is made that the plant material was obtained through unauthorised use of propagating material and that the PBR owner did not have a reasonable opportunity to exercise its rights in relation to the material.

    Recommendation 14.

    The jurisdiction of the second tier of the Federal Court of Australia to include PBR matters.

    Appropriately qualified magistrates must be made available and there should be appropriate measures taken to ensure the processes of the second tier are faster and cheaper than in the first tier. Examples include simplifying and standardising procedures for expert evidence and DNA testing through the issuing practice notes, use of alternate dispute resolution where appropriate, and curtailing of the discovery phase.

    Recommendation 12.

    An on-going Expert Panel be established to provide guidance and opinions on general issues or specific cases concerning the PBR Act and related law. The Panel should comprise appropriate people with expertise in relevant areas who provide their services as required.

    Upon request from any person and for a moderate fee, the Panel may provide detailed guidance and opinions on general issues or specific cases concerning the PBR Act and related law. The Panel should focus on the enforcement of granted rights and not provide advice on the registrability of individual applications for PBR. The Panel’s opinions should be made publicly available in a manner that respects commercially sensitive material. The Panel may refer matters to the Government or ACIP as it sees fit.

     

     

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