Productivity Commission intellectual property arrangements

Part 1 of my article on the Productivity Commission’s Final Report on Intellectual Property Arrangements has been belatedly published in the Australian Intellectual Property Law Bulletin: (2018) Vol. 30 No. 10 p. 210.

Subscription only, I’m afraid.

This part looks at the Productivity Commission’s approach and treatment of patents. Part 2 will deal with copyright, designs and other issues.

This issue of AIPLB also includes a paper by Richard Hamer and Lev Gutkin on patents law in 2016 and Marina Olsen’s review of the Productivity Commission’s recommendations on designs.

Between writing the paper and its publication, the Government has published its response to the Productivity Commission’s report. Despite the Raising the Bar reforms to inventive step, that response included acceptance of the recommendation to change the inventive step requirement yet again. The Government has since published several discussion papers on ways to “reform” inventive step and the requirement for disclosure of the technical advance, a statement of objects and Crown use.

The Government has published its response to ACIP’s Designs Report

On 6 May 2016, the Government published its response to ACIP’s review of designs law. Who knew?

ACIP came up with 23 recommendations. For the most part, the Government accepted ACIP’s recommendations. Those accepted include:

  • introducing a 6 month grace period before filing an application for registration, with a requirement that an applicant relying on the grace period provide a declaration to that effect (recommendation #12);
  • introducing a prior user defence (recommendation #12);
  • retaining the requirement of distinctiveness in s 19 in its current form (recommendation #10);
  • not introducing an unregistered design right (recommendation #22);
  • allowing amendment of a statement of newness and distinctiveness up until certification (recommendation #11 – “in principle”);
  • not extending the maximum term of a registered design from 10 years to 15 years unless Australia decides to join the Hague Agreement (recommendation #3) as to which IP Australia should investigate further and continue to monitor usage by our major trading partners;[1]
  • changing the name of a registered, but uncertified, design to something less misleading like “uncertified design” (recommendation #4);
  • retaining the current requirement that a design be registered for the whole product, while investigating further whether allowing partial product registrations would substantially advantage Australian applicants and does not give rise to substantial practical or legal issues overseas (recommendation #13);
  • take steps to make s 18 consistent with the overlap provisions of the Copyright Act;
  • correcting a miscellany of anomalies (including conferring power on exclusive licensees to being infringement proceedings) (recommendation #18), but aligning s 71 with the exclusive rights granted by s 10[2] is not necessary as the current position has not given rise to any problems and fixing the anomaly would create uncertainty and could have unintended effects (recommendation #17).

The Government has specifically rejected introducing customs seizure provisions for infringing products in line with the regimes currently in force for other intellectual property rights. This:

would pose a range of practical difficulties, and would be resource intensive for the Australian Border Force (ABF) to implement.

Moreover, design owners can currently obtain orders from the Courts which ABF could act on to prevent release of particular imported products.

A number of other recommendations were noted (such as requiring examination to be requested by the first renewal period and introducing an opposition system following certification). The Government considers action on these should await IP Australia’s further investigations into whether Australia should join the Hague system for international registration.

Another recommendation “noted” was the recommendation to improve the process for multiple design applications by reducing the fees. This needs to be considered “further in the context of IP Australia’s current fee review, to be completed in 2016.”

For the full response to all recommendations, go here (pdf).


  1. The Productivity Commission of course is going to say “Don’t do it” – much louder than that! See chapter 10.  ?
  2. Although s 10 confers the right to authorise exercise of an exclusive right, authorising someone to do an infringing act is not itself an infringement under s 71 and, of course, what is required for liability at common law for directing or procuring and infringement is so much clearer following Keller.  ?