PBR

Australian Intellectual Property Report 2015

IP Australia has released its Australian Intellectual Property Report 2015.

In addition to reporting on a range of statistics and some commentary, the report includes a number of “interactive” graphs that you may explore. Much, if not all, of the data is available through the Government Open Data initiative.

The headline point is that applications for trade marks and plant breeder’s rights increased over 2013, while applications for patents and registered designs decreased. The report attributes the decline in patent applications to the increased threshold arising from the commencement of most of the substantive reforms in the Raising the Bar and the rush to file before their commencement.

Australians are the largest source of filings for trade mark, registered designs and pbr. US-based applicants the largest source of patent applications; Australian residents being the second largest.

There were 25,947 applications for standard patents in 2014, a decrease of 13% on 2013. 19,034 standard patents were granted; an increase of 13% over 2013. Over 94% were granted to non-residents. The average number of months from filing to request for examination fell from 16.3 to 13.6 months; the average time from request to first report is just over 9 month and, on average, the time from first examination report to acceptance was a further 14 months. Australians filed 9,012 patent applications abroad in 2013 (41% in the USA), up 3% on 2012.

There were 1523 applications for innovation patents, down from 1676 in 2013. Australians accounted for 66% of the filings.

There were 64,381 trade mark applications filed in Australia in 2014, up 2% from 2013; correspondingly, Australians filed 16,267 applications overseas (in 2013). The top 3 filing destinations were the USA, China and NZ – accounting for 50%. The USA supplanted China as the “top destination”. Apparently, this is in line with a global trend.

6550 designs were registered in 2014, and 1452 were certified – almost double the number certified in 2013. IP Australia speculates that there are few applications to register designs because:

According to Lim et al (2014) the role of IP rights in the market for designs is limited.9 Buyers and sellers in the market view designs as a service that is co-created. As IP rights protect the artefact, not the service, IP rights are perceived as a secondary issue in the marketplace. This view of design rights provides insights into the low volume of design registrations relative to patents and trade marks.

The number of applications for plant breeder’s rights skyrocketed from 330 in 2013 to 341!

The report notes that IP Australia is aiming in 2015 to complete research projects into innovation trends in the mining industry, who and in which areas in the textile, clothing and footwear industry is filing patents and the role of geographical indicators.

Australian Intellectual Property Report 2015 Read More »

IP Australia consults on red tape streamlining and costing

IP Australia has issued to discussion papers:

  • Proposals to streamline IP processes and support small business; and
  • Proposals to streamline IP processes and support small business – Regulatory costs,

apparently following Parliamentary Secretary Karen Andrews’ announcement.

According to IP Australia’s website, the “streamlining” paper:

The … Consultation Paper outlines 22 proposals to align and simplify our IP processes, support small business and make some technical fixes relating to the regulation of IP attorneys.

The first 10 proposals apply across the board (as it were) to patents, trade marks, designs and PBR and relate to matters such as aligning renewals re-examination/revocation, extensions of time, writing and filing requirements.

There are 3 further proposals affecting patents: third party requests for examination, colour drawings and extensions of term – notices to the department of health.

The 14th proposal relates to the acceptance timeframe for trade mark applications.

15 and 16 affect the registration of designs and multiple copies of representations.

There are 6 proposals “supporting small business” including unjustified threats of infringement and trade marks and shelf companies.

And 2 “technical fixes” relating to publishing the personal information of “IP attorneys” and prosecuting “IP attorney” offences.

There are some 84 pages in the paper. So this post is not going to do the paper anything approximating “justice”.

One proposal is to reduce the acceptance period for trade marks from 15 months to 6 months. There are also substantial changes proposed for the regimes relating to extensions of time:

 – Align PBR extensions with those for patents and for a wider range of actions

 – Specify the grounds for the ‘special circumstances’ extension in the trade marks legislation and align circumstances beyond control across the rights

 – Allow extensions of time for renewal grace periods but not renewal dates, for all IP rights

– Make the ‘despite due care’ extension available for all IP rights and have no limit on the period of the extension

– For all rights, limit the ‘error or omission by applicant/owner’ extension to 12 months

 – Streamlined process for short extensions of time

– Simplify and align fees

– Make all extensions of time non-discretionary.

Certificates: you know, things like Certificates of Registration:

The IP legislation would be amended so that certificates would not be required to be issued for examination, registration and grant. Also, the patents and trade marks Acts would be amended to no longer provide that a certificate signed by the Commissioner or Registrar is prima facie evidence of a matter. Instead, the Acts would provide that any document approved by the Commissioner or Registrar (or similar wording) would constitute prima facie evidence of a matter. This would enable IP Australia to continue to provide documents for such purposes, without requiring them to be signed certificates. Signed copies or extracts of the Registers would continue to be admissible in proceedings as if they were the original Register, and therefore prima facie evidence of the particulars on them.

Unjustified threats: this would see removal of the defence under s 129(5) of the Trade Marks Act of bringing infringement proceedings reasonably timely (which is not currently a defence for patent or designs threats), providing the remedy for PBR and introducing a power to award additional damages in respect of blatant and unjustified threats against another party.

Trade marks and shelf companies: this proposal would see amendment of s 27 so that it would not be necessary to incorporate the company that is intended to use the trade mark, but purchase of a shelf company would suffice.

The renewals proposal would see a grace period of 6 months introduced for renewing PBR and provision that all IPR could be infringed during the grace period if subsequently renewed.

In coming up with those proposals, IP Australia has used a costing framework and developed detailed costings which are set out in the “costings” paper. We are being invited to comment on those too.

If you are feeling excited, you should get your submissions in to IP Australia by 7 April 2015.

Proposals to streamline IP processes and support small business (pdf)

Proposals to streamline IP processes and support small business – Regulatory costs (pdf)

IP Australia consults on red tape streamlining and costing Read More »

Review of Plant Breeder’s Rights Advisory Committee

IP Australia has published consultation paper on the Plant Breeder’s Rights Advisory Committee.

The PBRAC is established under the Plant Breeder’s Rights Act 1994 to advise the government about issues arising under the Act. As part of the Government’s commitment to efficiency and streamlining the public service, the National Commission of Audit recommended that the functions of PBRAC be considered for consolidation into the department with portfolio responsibility for PBR.

The Government, through IP Australia, is now seeking input about the role of PBRAC and whether there are other, more efficient ways to access the technical expertise that PBRAC is expected to provide.

Submissions are sought by 31 October 2014.

Consultation paper here (pdf).

ps The National Commission of Audit also questioned the continuation of ACIP, but that will be the subject of a separate paper.

Review of Plant Breeder’s Rights Advisory Committee Read More »

Intellectual Property Laws Amendment Bill 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).  ?

Intellectual Property Laws Amendment Bill 2014 Read More »

Securities over IP

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.

Securities over IP Read More »

Summer must be over …

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.

Summer must be over … Read More »

Another IP amendment bill

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

Another IP amendment bill Read More »

Another plant breeder’s rights case

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

Another plant breeder’s rights case Read More »

Government responses to ACIP enforcement reviews

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).

Government responses to ACIP enforcement reviews Read More »

(Not) a case of PBR

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

    (Not) a case of PBR Read More »