auDA Policy implementation review

auDA, the body regulating the .au domain, has embarked on a Policy review, through a Review Panel chaired by John Swinson.

The first issue being considered is how to implement the decision to allow “second level” domain name registrations: e.g. domain.au in addition to domain.com.au and domain.net.au etc.

One issue that gives rise to is how to resolve conflicting reapplication for registration if different people have “domain” registered already in e.g. .com.au and .net.au. The Issues Paper explains:

53. Given the extensive stakeholder consultation already undertaken on whether existing registrants should be given priority registration rights, the Panel has decided not to revisit this issue but to focus on developing a priority registration policy. The development of a priority registration policy requires consideration of the following issues:
• cut-off date for determining registrant eligibility for priority registration;
• process for resolving competing claims to the same second level domain name; and
• the priority registration period in which registrants will have exclusive rights to register the second level domain name.

auDA is seeking your views by 10 November 2017.

Issues Paper and further details here .

A second, later phase of the review will look at the policies relating to registration in the established second level domains (such as .com.au).

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.  ?

Harper Review: Government Response

Yesterday (November 24), the Government published its response to the Competition (Harper) Review.

According to the response, “Harper” made 5556 recommendations; the Government has accepted 39 of them in full, 5 in part and the remainder are still under advisement.

In the intellectual property field, the item receiving most press (here and here) is the Government’s acceptance of the recommendation to remove all remaining restrictions on parallel importing books. At the moment,[1] the importation of a genuine book published first in Australia or within 30 days of first publication overseas may be blocked provided the copyright owner complies with the convoluted regime to supply copies in response to an order. This guarantees availability, but still leaves the copyright owner free to set the price it charges the person placing the order.

Harper recommended:

Restrictions on parallel imports should be removed unless it can be shown that:

• the benefits of the restrictions to the community as a whole outweigh the costs; and

• the objectives of the restrictions can only be achieved by restricting competition.

Consistent with the recommendations of recent Productivity Commission reviews, parallel import restrictions on books and second?hand cars should be removed, subject to transitional arrangements as recommended by the Productivity Commission.

Remaining provisions of the Copyright Act 1968 that restrict parallel imports, and the parallel importation defence under the Trade Marks Act 1995, should be reviewed by an independent body, such as the Productivity Commission.

What the Government plans:

The Government supports the removal of parallel import restrictions on books. The Government will progress this recommendation following the Productivity Commission’s inquiry into Australia’s intellectual property arrangements (see Recommendations 6 above) and consultations with the sector on transitional arrangements.

The terms of reference for the inquiry provide that the Productivity Commission is to have regard to the findings and recommendations of the Harper Review in the context of the Government’s response, including recommendations related to parallel import restrictions in the Copyright Act 1968 and the parallel importation defence under the Trade Marks Act 1995.[2]

Harper’s recommendation 6 was a reference to the Productivity Commission to undertake a 12 month long “overarching review of intellectual property” focusing on

competition policy issues in intellectual property arising from new developments in technology and markets; and the principles underpinning the inclusion of intellectual property provisions in international trade agreements.

The Government response notes that in August it had already made this reference to the Productivity Commission.[3] The response on this point is curiously even-handed. The Productivty Commission:

is to have regard to Australia’s international arrangements, including obligations accepted under bilateral, multilateral and regional trade agreements to which Australia is a party. The global economy and technology are changing and there have been increases in the scope and duration of intellectual property protection. Excessive intellectual property protection can result in higher costs for Australian businesses and consumers and inhibit innovation. However, weak intellectual property protection can lead to under?investment in research and development (R&D) which also stifles innovation. A comprehensive evaluation of Australia’s intellectual property framework is needed to ensure that the appropriate balance exists between incentives for innovation and investment and the interests of both individuals and businesses, including small businesses, in accessing ideas and products. (emphasis supplied)

However, an independent inquiry into the processes for negotiating intellectual property provisions in treaties is not necessary: there are already robust processes in place and publishing an independent cost benefit analysis before the negotiations have concluded might tip our hand in the negotiations.

Section 51(3) gained a slight reprieve. Harper’s recommendation 7 was that it be repealed (and a new power for the ACCC to create block exemptions be introduced). Despite Prof. Harper’s injunctions that this is old news and we should just, er, do it, the Government thinks it should wait and see what the Productivity Commission says. Anyone betting the Productivity Commission won’t recommend …?

The Government also supports conferring a power to grant block exemptions on the ACCC:

A block exemption removes the need to make individual applications for exemption. The exemption is granted if the competition regulator considers that certain conditions are satisfied: either that the category of conduct is unlikely to damage competition; or that the conduct is likely to generate a net public benefit.

A block exemption power that supplements the existing authorisation and notification frameworks will be helpful in establishing ‘safe harbours’ for business. Block exemptions will reduce compliance costs and provide further certainty about the application of the CCA. They are an efficient way to deal with certain types of business conduct that are unlikely to raise competition concerns, either because of the parties engaged in the conduct or the nature of the conduct itself.

So, in the interests of promoting competition, we are going to introduce a European-style power for the regulator to design the marketplace.


  1. Copyright Act s 44A.  ?
  2. The Government also said it would not proceed with the recommendation about second hand cars, in the interests of consumer protection and community safety.  ?
  3. Indeed, you should already be putting the finishing touches on your submissions in response to the Issue Paper since they are due on Monday!  ?

Productivity Commission to review all IP laws

The Harper Review[1] recommended that the Government should direct the Productivity Commission to undertake an overarching review Australia’s IP laws.

The Treasurer and the Minister for Small Business have now announced that review.

According to the Harper Review:

an appropriate balance must be struck between encouraging widespread adoption of new productivity-enhancing techniques, processes and systems on the one hand, and fostering ideas and innovation on the other. Excessive IP protection can not only discourage adoption of new technologies but also stifle innovation.

Given the influence of Australia’s IP rights on facilitating (or inhibiting) innovation, competition and trade, the Panel believes the IP system should be designed to operate in the best interests of Australians.

The Panel therefore considers that Australia’s IP rights regime is a priority area for review. (emphasis supplied)

In reaching that view, the Harper Review flagged concern about entering into new treaties with extended IP protections.

The terms of reference state:

In undertaking the inquiry the Commission should:

  1. examine the effect of the scope and duration of protection afforded by Australia’s intellectual property system on:

    a. research and innovation, including freedom to build on existing innovation;

    b. access to and cost of goods and services; and competition, trade and investment.

  2. recommend changes to the current system that would improve the overall wellbeing of Australian society, which take account of Australia’s international trade obligations, including changes that would:

    a. encourage creativity, investment and new innovation by individuals, businesses and through collaboration while not unduly restricting access to technologies and creative works;

    b. allow access to an increased range of quality and value goods and services;

    c. provide greater certainty to individuals and businesses as to whether they are likely to infringe the intellectual property rights of others; and

    d. reduce the compliance and administrative costs associated with intellectual property rules.

Then follows a catalogue of 9 matters for the Commission to have regard to. These include the Government’s desire to retain appropriate incentives for innovation, the economy-wide and distributional consequences of recommendation and the Harper Review’s recommendations in relation to parallel imports.[2]

The Commission must report within 12 months.


  1. The Competition Policy Review, recommendation 6.  ?
  2. Rec. 13 and section 10.6 of the Competition Policy Review: i.e., repeal any remaining restrictions unless the benefits outweigh the costs and the objectives of the restrictions can only be achieved by restricting competition. Cue diatribe about “restricting competition” especially given the oft mouthed formula that IP rights rarely (if ever) restrict competition.  ?

ACIP – Designs Options Paper

The Advisory Council on Intellectual Property (ACIP) has released an options paper for arising from its Review of the (Registered) Designs System.

The Options Paper identifies 3 potential routes for further development of designs law in Australia.

Option 1 would involve addressing a few specific issues in how the 2003 Act works without revisiting the policy settings. This could involve:

  • making the identity of Convention applicants consistent with the rules on entitlement;
  • expanding the rules on priority claiming so that differing formal requirements between jurisdictions do not disadvantage Convention applicants;
  • bringing the rules on entitlement into line with the Patents Act;
  • expanding the prior art base so that it is not just limited to the product the subject of the application;
  • expanding the situations where fraud, false suggestion or misrepresentation can be invoked for revocation purposes;
  • allowing exclusive licensees to sue for infringement;
  • making it clearer that a registered, but uncertified, design does not confer enforceable rights until certification;
  • removing the option to publish a design instead of registering it;
  • reducing the fees for multiple designs included in a single application; and
  • addressing anomalies that have arisen in the copyright-design overlap, especially in relation to 2D and 3D ‘embodiments’.

Option 2 would include the changes identified under Option 1, but going further to bring Australian law more into line with “major trading partners and international treaties”. That could involve amending the Act to allow accession to the Hague Agreement. Changes could involve:

  • extending the term of protection from 10 years to 15 including introducing a require to obtain certification on renewal after the first 5 years and a system of opposition following certification
  • introducing a grace period of 6 months
  • deferring publication to registration
  • introducing customs seizure provisions

Option 3 is summarised in the Executive Summary as:

a wholesale revision of the role of the designs system in Australia’s IP law, including consideration, in particular, of the need for unregistered design protection, and the scope of design protection (including the scope of secondary liability) in the context of technological developments such as 3D scanning and printing. This would also involve consideration of whether protection should be extended to partial designs and whether virtual or non-physical designs (such as screen displays and icons) should themselves be treated as products.

ACIP appears to consider Option 3 would be appropriate if the policies reflected in the 2003 Act no longer make sense or have been superseded. Examples where this might be the case include unregistered design right, full copyright proection regardless of industrial application or broader rights such as allowing registration for parts of products, such as handles, rather than for products as a whole.

The impending availability of 3D-printing, or at least its more widespread take up, is raised as a potential basis for pursuing option 2 or option 3.

ACIP does note that going down the path of Option 3 (at least) would involve costs as well as benefits and concludes:

ACIP does not presently have evidence sufficient to suggest that wholesale change would be in the national interest. ACIP envisages that Option 3 would involve consideration, not only of the designs system per se, but how it interacts with other systems: most obviously the copyright system, but also standard and innovation patents and other systems such as protection for confidential information. Ideally, such a review would also involve gathering more detailed evidence on Australia’s industrial and economic strengths, and developing strategies for industry development in the field of design, as well as more information on the operation of systems, such as those in operation in some European countries, which do not exclude industrial design from the copyright system. Such a review ought to be undertaken by specialist intellectual property economic, business and legal analysts.

In formulating these proposals, ACIP has taken into account responses to a survey it conducted as well as submissions.

ACIP would like to receive your submissions on these submissions on their return from the Christmas/Summer holidays: i.e. 23 January 2015.

ACIP – Review of Designs System Options Paper (pdf)

auDA reviews whoIS policy

auDA, the body which administers the domain name system in the .au (i.e. Australia) space (OK, ccTLD) has embarked on a review (pdf) of its WhoIS policy.

There are 2 main issues:

  1. Should there be any changes to auDA’s WHOIS Policy covering the collection, disclosure and use of WHOIS data for .au domain names?
  2. Should access to .au domain name data (other than via WHOIS) be opened up?

Apparently, there was a workshop in October 2013 where these issues were canvassed (and you can view a video online – it does go for 1 hour and 25 minutes).

I think if you are a trade mark owner, or act for trade mark owners, you would be well-advised to be making submissions to at least retain the basic information you need to identify the registrant if you want to challenge the registration as conflicting with your trade mark.

I am also not sure why the WhoIS information does not include the date the current registrant became the registrant.

auDA has called for submissions to be made by 31 January 2014.

Link to the Issues Paper (pdf again)

Designs Act 2003 review

In May 2012, ACIP was directed to investigate the effectiveness of the Designs Act 2003 which commenced operation on 17 June 2004.

Now ACIP has published an issues paper.

Chapter 3 sets out 22 questions ACIP is seeking answers to. However, ACIP does also say:

the main purpose of the paper is to provoke discussion and any other relevant comments are very welcome.

The topics identified (so far) for comment include:

  • Duration of design protection
  • Grace period
  • Statement of Newness and Distinctiveness
  • Publication
  • Unregistered Designs Rights (UDRs)
  • Harmonisation with international practices (i.e. The Hague Agreement)
  • Border Protection Measures
  • Design overlap with other IP rights
  • Threshold of registrability
  • Confusion regarding the registration/publication/examination process;
  • The (potential) impact of new technologies, such as 3D printing technologies and graphical user interfaces.

There are some interesting statistics:

  • about 6,000 design applications filed each year (the Germans do 50,000+ a year, the Chinese are a whole order of magnitude bigger)
  • 90% proceed to registration (wonder how the other 10% manage to stuff up filling in the form?)
  • 20% of registrations have examination requested (so you can sue someone for infringement or try and revoke them)
  • 10% of those examined fail (i.e., 90% get certified)

Table 4 sets out the classes in which most applications are being made and Table 5 outs those who file the most applications.

The closing date for submissions is 31 October 2013.

Download the issues paper from here (pdf).

Lid dip: Janice Luck

Innovation Patents: what to do?

ACIP has released an options paper on what to do about the innovation patent system.

An innovation patent is a uniquely Australian contribution towards encouraging innovation. You can get one (if you apply for it) for pretty much anything[1] unless it differs from the prior art only in ways that “make no substantial contribution to the working of the [ahem] invention” as explained by the Full Court in the Delnorth case.

As recounted in the options paper, the basic objective of the innovation patent system is to encourage and promote investment in innovation by Australian (especially) SMEs.

The options paper is full of interesting statistics and there is an accompanying economics paper, the Verve report attempting to get some empirical data. For example, only about 25% of innovation patents ever get certified. Also, more than 50% of innovation patents are allowed to lapse by the end of their third year. The proportion of innovation patents granted to foreigners is 35% and rising.

Insofar as the options paper takes a position, it would seem that there is pretty much universal agreement that the level of innovation required to get an innovation patent is too low.

The options paper also appears to discern evidence that innovation patents are being used “strategically” or “tactically”, at least by some applicants.

ACIP is now seeking your views on what to do.

ACIP itself identifies 3 broad options:

(1) do nothing (option A);

(2) abolish the innovation patent system (option B); or

(3) change the innovation patent system (option C).

Option A: do nothing

ACIP notes that it is too soon to tell how the Raising the Bar reforms will affect those seeking innovation patents. Those changes do nothing, of course, to the level of “innovative step”.

The Verve report received 517 responses to its survey of the 3,195 Australian inventors who have taken out innovation patents to protect their “inventions”. Bearing in mind that these are the people that the innovation patent system is supposed to be encouraging, ACIP notes:

The Verve survey has shown that individuals and SME user-groups appear to be generally satisfied with the innovation patent system—albeit this survey occurring prior to the full impacts of the Raising the Bar Act being felt by users of the system.

The biggest problem with this do nothing option, however, is that it doesn’t do anything to address the apparently widely recognised issue that the innovation threshold is too low.

As ACIP notes, letting people get an innovation patent in Australia for something which is not patentable anywhere else does nothing to encourage Australian businesses to compete overseas. It should also be borne in mind that an innovation patent over something will probably have the effect of meaning its price will be higher than it would otherwise have been.

Option B: abolish the innovation patent system

There is a nice catalogue of what one might think were compelling reasons why this is a good option. There is also a summary of arguments against it.

This (or a variation on it) is widely perceived to be the option proposed late last year by IP Australia. The options paper indicates that the majority of non-confidential submissions to IP Australia and to ACIP didn’t support IP Australia’s proposal.

The options paper also includes a curious page suggesting that the designs registration system could be amended to permit the registration of functional designs. I (perhaps mistakenly) had thought the Franki Committee’s recommendations were implemented by the Designs Amendment Act 1981 s 11 (inserting new s 18) and s 5 (inserting a new definition of ‘design’) and find their current embodiment in s 7(2) of the Designs Act 2003. The “problem”, if it be a problem, with designs registration is that it protects only the visual appearance of a product, not its function. The new Act doesn’t seem to be any different in that respect to the old Act and it was plainly a deliberate policy choice.[2]

Option C: change the innovation patent system

The problem here, at least insofar as the level of innovation is concerned, is what should that new level be and how on earth would the Courts ever work it out. ACIP plainly didn’t like the suggestions of the Law Council, IPTA or FICPI on this front.

The options paper also raises for further consideration changing or limiting the remedies: no injunction or no interlocutory injunctions, but continued exposure to pay damages or account for profits; limiting the ability to recover pecuniary remedies to the period after certification. Oh dear!

ACIP would like to hear your views by 4 October 2013. It is also planning to hold workshops for public consultation during September.

Options Paper here (pdf)

Verve report here


  1. Patents Act 1990 s 18(2) and (3) exclude some things from patentable subject matter and, apart from the level of innovation prescribed in s 7(4), there are a few other largely technical requirements to satisfy too.  ?
  2. See e.g. recommendations 24, 25 and 26 of the ALRC’s Designs report. Of course, the limitation of the designs registration system to visual appearance only seemed to be one of the main complaints about the system identified by the ALRC: see e.g. 2.44 of the ALRC’s report and 3.49 and 6.5.  ?

auDRP review

auda is conducting a review of the auDRP – the dispute resolution policy covering domain names registered in the .au domain name space.

The auDRP was derived from the UDRP, so many of the principles worked out under the latter are equally applicable under the auDRP. Two of the main differences, however, are that under the auDRP:

  • a complainant may have rights sufficient to found a complaint “in a name”, not just a trade mark; and
  • the auDRP requires a complaint to show only registration in bad faith or use in bad faith, it is not necessary to show both bad faith requirements have been satisfied.

auda published an issues paper (pdf).

There is some interesting information about how many disputes there have been and which service providers have been providing the dispute resolution services – in recent years it has been WIPO and LEADR. There is also a breakdown of fees charged by various bodies for dispute resolution under the UDRP.

One question posed is whether auda should put the fees charged for dispute resolution up. Other issues on which submissions are invited were identified by ICANN in Annex 2 to its Final Issues Report (pdf) in 2011 on the UDRP. They include:

Policy/Process Issue

page3image4352

Description

Safe Harbors

Policy should include clear safe harbors, such as to protect free speech and fair use or other non-commercial rights of registrants

Appeals

page3image8608

No appeals of process in policy itself– two options appeal of decision or trial de novo

Establish an internal appeals process to ensure implementation of fair trial requirements

Statute of Limitations

There should be an express time limitation for claims brought under the policy

Reverse Domain Name Hijacking/
Uniform Procedures for Transfers

page3image15752

A finding of reverse domain name hijacking is rarely found, and panelists should be encouraged to make this finding when appropriate

No specified timeframe for implementing transfers

Business Constituency

Delays often experienced in implementation of decisions by Registrars

Loser Pays Nothing

Losing Respondent should pay filing fees and attorney’s fees

However, I am coming to this late: submissions, if any, are supposed to be in by 31 January 2013.

Parmaceutical Patents Review

Last month, the Parliamentary Secretary for Industry and Innovation, Mark Dreyfus, has appointed a panel to review the patenting of pharmaceuticals in Australia.

Now the Panel have published a Background and Issues Paper.

The Panel’s initial impressions of key issues include:

  • a number of concerns have been raised about the length and breadth of protection provided by the extension of term provisions, that is, the duration of the extension and the types of pharmaceutical patents eligible.
  • Are the recent amendments to increase the thresholds for the grant of an Australia patent appropriate in the context of pharmaceuticals? If not, why not and what further changes are necessary?
  • Do the systems for opposition and re-examination provide appropriate avenues for challenging the granting and validity of a pharmaceutical patent?
  • Do interlocutory injunctions, as the law is currently applied, provide appropriate relief in cases involving pharmaceuticals?
  • Is Australian law on contributory infringement appropriate in relation to pharmaceuticals?
  • Are follow-on patents being used to inappropriately extend protection for pharmaceuticals? If so, how? And, if they are, is this sound policy and what changes, if any, are needed?
  • should the period of data exclusivity be extended in line with the patent term
  • patent certificates: a generic company must provide a certificate stating that it believes that it is not marketing, and does not propose to market, the therapeutic goods in a way that would infringe a valid patent, or that the generic company has given the patent owner notice of the application
  • the mess arising from copyright in product information documents

Be warned: submissions are due by 21 January 2013, hearings are proposed for February 2013, a draft report in March 2013 and the final report in April 2013.

They also have a blog – don’t forget to bookmark it!