ACIP

The ACIP Designs Amendments have been enacted

On 10 September 2021, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 received Royal Assent, becoming the 100th statute enaceted by the Commonwealth Parliament this year.[1]

As the marvellously evocative title indicates, this Act amends the Designs Act 2003 to implement the recommendations of ACIP’s Review of the Designs System: Final Report from March 2015 which have been accepted.

Two amendments come into force straight away. The rest (unless proclaimed earlier) come into force 6 months (and a day) later – 11 10 March 2022.

Amendments with immediate effect

So, for design applications made on or after 11 September 2021, the distinctiveness of a design and its infringement will now be tested by the standard of “the familiar person”.[2] That is, s 19(4) has been amended to test distinctiveness:[3]

(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person (the familiar person) who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user) (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).

Australia’s adventure in testing the validity and infringement of a registered design by somethin akin to the EU’s “informed user”, therefore, has come to an end.

Also, s 93(3) has been amended so that the registration of a design can be revoked on lack of entitlement grounds only if the Court is satisfied that it is just and equitable to do so in all the circumstances. This brings revocation on entitlement grounds in line with the Patents Act.[4] The idea here being to ameliorate the harshness of the sanction to validity in the case of essentially honest mistakes.

This amendment will apply to any applications to revoke a registered design made on or after 11 September 2021. It does not matter when the design was registered.[5]

Amendments coming into force later

The remainder of the amendments come into operation later: If not earlier proclaimed, on the day after six months from Royal Assent.

A number of these have been covered in earlier posts. They include:

  • the 12 month grace period for publications or public uses made before the priority date by or with the consent of the registered owner, a predecessor in title or “the person who created the design” (Schedule 1);
  • conferring power on exclusive licensees to sue for infringement (Schedule 5);
  • the introduction of an exemption from infringement on the grounds of prior use (Schedule 2);
  • the application process will be changed so that, if a request for registration is not filed with the design application, a request will be deemed to have been made 6 months from the application date (if not made earlier or the application has not been withdrawn).[6] In other words (and assuming the application passed the formalities test), a design will be registered automatically 6 months after the application is filed rather than lapse if no request has been filed (Schedule 3);
  • relief from liability for infringement for acts done before the design was registered (i.e. between the priority date and publication of the design) (Schedule 4);
  • removal of the unused option to publish a design rather than register it (Schedule 3).

There are also some other, technical amendments.

Some care will be needed with the “transitional provisions”. For the most part, the amendments will apply only to design applications made on or after the commencement of the relevant amendments.

Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021

Explanatory Memorandum

Addendeum to the Explanatory Memorandum

The ACIP Report

Lid dip to Brett Massey at IP Australia for drawing my attention to the correct date the second round commence (assuming not proclaimed earlier).


  1. At the time of writing, the Act does not appear to be on Austlii, but you can find it here.  ?
  2. Schedule 7 Part 1 item 5(1) and (2).  ?
  3. Text in italics inserted by the amendment. This is my mark up I’m afraid.  ?
  4. Patents Act 1990 s 22A and s 138(4).  ?
  5. Schedule 7 Part 2 item 8 and Explanatory Memorandum para 248.  ?
  6. The “relevant period” is to be prescribed in the regulations but the helpful flow chart included in the Explanatory Memorandum indicates the “relevant period” will be 6 months.  ?

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.  ?

Innovation patent consultation on the consultation

IP Australia has issued a consultation paper seeking the public’s view on (the now departed) ACIP’s recommendations for the innovation patent. Specifically:

IP Australia is seeking feedback from interested stakeholders on:

  • the ACIP recommendation that the government should consider abolishing the innovation patent system
  • any alternative suggestions to encourage innovation amongst SMEs.

Get your comments in by 25 September 2015

IP Australia’s consultation paper here (pdf or word). The ACIP report being “consultated” upon, via here and updated here.

ACIP Final Designs Report

ACIP’s final report into its review of the Designs System has been published.

The report is 70 pages (including annexes) – 43 pages for the report itself; and 23 recommendations. Key recommendations include:

  • investigate joining the Hague system and, if a decision is made to join, extend the maximum term of design protection to 15 years;
  • introduce a grace period of 6 months before the filing date, but require an applicant relying on it to file a declaration to that effect;
  • rename a registered design that has not been certified as an “uncertified design”;
  • require a registered design owner to request examination by the first renewal deadline (i.e. 5 years);
  • introduce a system of opposition following certification;
  • improve the process for multiple designs by reducing fees in line with the ALRC’s original proposal;
  • allow fiddling with the statement of newness and distinctiveness until certification;
  • fix up a range of anomalies;
  • specifically include the role of the designs system in any broader review of Australia’s IP framework such as that contemplated by the Competition Policy Review;
  • not introducing an unregistered design right.

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)

ACIP on innovation patents

ACIP’s final report into Innovation Patents has been published.

Key points / recommendations:

  • ACIP can’t find evidence to support conclusion that innovation patents promote innovation

 

  • ACIP recommends that, if the innovation patent system be retained:

 

    • there be a new “innovation” threshold:

amending the Patents Act 1990 (Cth) to raise the level of innovation to a level above the current innovative step level, but below the inventive step level that applies to standard patents. A suitable level of innovative step would be provided by the test of inventiveness described by the High Court of Australia in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9: (1980) 144 CLR 253; (1980) 29 ALR 29 with a modification to that test to include the current definition of what is relevant CGK. In order to be innovative an invention would need to be non-obvious by reference to CGK either within or outside the patent area but not by reference to prior art information that is not part of CGK at the priority date of the relevant claims of the innovation patent. This would be a lower threshold than is applied to standard patents, where the invention must be non-obvious by reference to the CGK and any piece of prior art.

I suppose that would at least be a test that requires some advance over the prior art and is (at least in theory) something which those of us who started growing up under the 1952 Act should be familiar with.

    • a request for examination must be filed within 3 years
    • the term “patent” be reserved for certified “patents” only;
    • exclude from innovation patents “all methods, all processes and all systems “.

The Government has indicated it will respond in due course.

ACIP’s Innovation Patent Inquiry page.

Link to the Final Report (pdf).

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

Myriad wins Down Under

Nicholas J has ruled that Myriad’s patent for isolated gene sequences relating to BRCA1 are patentable subject matter for the purposes of Australia’s Patents Act 1990.

Claim 1 of the Patent (No. 686004 entitled “In vivo mutations and polymorphisms in the 17q-linked breast and ovarian cancer susceptibility gene”) is for:

An isolated nucleic acid coding for a mutant or polymorphic BRCA1 polypeptide, said nucleic acid containing in comparison to the BRCA1 polypeptide encoding sequence set forth in SEQ.ID No:l one or more mutations or polymorphisms selected from the mutations set forth in Tables 12, 12A and 14 and the polymorphisms set forth in Tables 18 and 19.

At [70], Nicholas J explained the scope of this claim:

Claim 1 extends to isolated DNA, RNA and cDNA that has a BRCA1 polypeptide encoding sequence as shown in SEQ ID No.1 with one or more of the mutations or polymorphisms specified in the relevant tables.

To qualify as patentable subject matter in Australia s 18(1)(a) prescribes that the claimed invention must be a “manner of manufacture”.

This term, much to the chagrin of modernising law reformers, derives from s 6 of the Statute of Monopolies 1623. In the “watershed” NRDC ruling in 1959, Dixon CJ, Kitto and Windeyer JJ declared that the meaning of “manner of manufacture” is not to be derived as a matter of mere etymology. Rather it poses a question:

“Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?”

and in answering that question, it must be recognised that the concept has a “broad sweep” intended to encourage developments that are by their nature unpredictable. Hence, their Honours indicated the processes at issue in that case were patentable subject matter because they led to, or resulted in, an artificially created state of affairs, that had some discernible effect, which had economic significance.  A very teleological approach from the supposed patron saints of strict legalism!

Nicholas J found that the isolated gene sequences claimed in Myriad’s patent were an artificially created state of affairs having economic significance.

His Honour at [105] rejected Myriad’s first line of defence claiming that there was a change in chemical structure simply by the process of isolating the gene sequence. Rather, more generally, the nucleic acid or gene sequence in its isolated form was sufficient to qualify as an artificially created state of affairs:

First, the concept of patentable subject matter is expressed in very expansive language.

Secondly, at [108] the nucleic acid did not exist in isolated form in the cell:

in the absence of human intervention, naturally occurring nucleic acid does not exist outside the cell, and “isolated” nucleic acid does not exist inside the cell. Isolated nucleic acid is the product of human intervention involving the extraction and purification of the nucleic acid found in the cell. Extraction of nucleic acid requires human intervention that necessarily results in the rupture of the cell membrane and the physical destruction of the cell itself. And purification of the extracted nucleic acid requires human intervention that results in the removal of other materials which were also originally present in the cell. It is only after both these steps are performed that the extracted and purified product may be properly described as “isolated” in the sense that word is used in the disputed claims.

Thirdly, at [109] isolating the substance could require “immense research and intellectual effort”.

In that case, it was only as a result of an intensive research effort that the isolated micro-organism in question could be made available for use in the manufacture of the new antibiotic. It was fortuitous for the patentee that it was its employees who were first to isolate the new micro-organism and first to deploy it in the manufacture of the new drug. That will not always be so. It would lead to very odd results if a person whose skill and effort culminated in the isolation of a micro-organism (a fortiori, an isolated DNA sequence) could not be independently rewarded by the grant of a patent because the isolated micro-organism, no matter how practically useful or economically significant, was held to be inherently non-patentable. In my view it would be a mistake, and inconsistent with the purposes of the Act, not to give full effect in such situations to the broad language used by the High Court in NRDC.

His Honour had earlier noted at [75] that, while the isolated substances contained genetic information, the patent did not claim information per se, rather, it was for a substance. Furthermore, at [76] because the claim was limited to the gene sequences in isolated form, it did not cover or extend to the naturally occurring DNA or RNA.

Nicholas J also noted that it was longstanding practice for the Commissioner to grant patents over gene sequences. Both ACIP (pdf) and the ALRC had recommended that this not be changed. The Government had announced (pdf) it accepted those recommendations and Parliament had implemented a different range of measures through the Raising the Bar Act, especially by introducing an explicit experimental use exception in s 119 C and the extension of the usefulness requirement by the introduction of new s 7A which was likely to affect the patentability of ESTs or expressed sequence tags.

 

Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65

Innovation patents – further chance to protest

IP Australia is seeking comments on how the innovation patent system is working.

Since 2001, Australia grants 2 types of patent: the standard patent with a normal term of 20 years and an innovation patent with a term up to 8 years.

Ann innovation patent need show only an innovative step over the prior art to be valid. According to the Full Court in Delnorth, this requires a difference that the person skilled in the art would understand makes a substantialmaterial contribution to how the product / method works. As the Full Court acknowledged, this is nothing like the inventive step requirement for a standard patent.  See also the SNF case.

According to IP Australia’s website:

Since the Delnorth (2009) decision in the Federal Court, relatively obvious minor improvements to inventions have been patentable.  There has been an unusual growth of innovation patent applications for certain technologies. There is some evidence that larger companies might be using the innovation patent system to extend the life of their patents and deliberately targeting competitors.

ACIP is already undertaking a review into the innovation patent system as a whole. The consultation paper for this (IP Australia’s) review explains:

The Advisory Council on Intellectual Property is presently conducting a review of the Innovation Patent system as a whole. In the mid term, this will provide valuable insights and recommendations for improvements.

In the short term, however, there is a pressing need to address emerging risks of the Innovation Patent system being used in ways which would lead to undue costs to consumers and to businesses that compete with owners of Innovation Patents. For example, there is a need to ensure that Innovation Patents do not inappropriately extend the life of pharmaceutical patents and delay the introduction of less expensive generic medicines, leading to increased costs to consumers and an increase in government expenditure through the Pharmaceutical Benefits Scheme.

As a result, the Government proposes to amend the Patents Act 1990 to raise the threshold for inventiveness to the same level as for Standard Patents (Attachment A refers). This approach is consistent with the second tier patent systems operating in countries such as Germany and Japan.

Comments are requested by 25 October 2012.

You can download the consultation paper, Innovation Patents – Raising the Step (sic), via this page.

Gene (no)patenting bill going down

The Senate’s Legal and Constitutional Affairs Committee has, by majority, recommended that the Senate should not pass the Patent Amendment (Human Genes and Biological Materials) Bill 2010.

The Bill is a private members’ effort and, perhaps not surprisingly, the three of its sponsor still in the Senate dissented.

(At the time of writing, it is proving difficult to get a working link to the text of the Bill itself.) According to the EM it was considered desirable to expand the ban in s 18(2) on patenting human beings and the biological processes for their generation:

The purpose of this Bill is to advance medical and scientific research and the diagnosis, treatment and cure of human illness and disease by enabling doctors, clinicians and medical and scientific researchers to gain free and unfettered access to biological materials, however made, that are identical or substantially identical to such materials as they exist in nature.

These biological materials even if they have been isolated, purified or synthetically made have not been transformed from products of nature into products of humankind.

Thus the Bill (a) reinforces the applicability of the proviso in section 6 of the Statute of Monopolies within the meaning of section 18(1)(a) and section 18(1A)(a), (b) reinforces the applicability of the distinction between discovery and invention and (c) applies that distinction by expressly excluding from patentability, biological materials which are identical or substantially identical to such materials as they exist in nature, however made.

Notwithstanding this, it is rather difficult to find an Australian research institute researching genes etc. which supported the idea.

The ALRC of course had previously recommended leave well enough alone.

The issue doesn’t seem likely to go away. Apart from whatever the Bill’s sponsors and their allies may get up to, the majority concluded:

5.26 Like many of those who gave evidence, the committee prefers the solutions offered in the proposed amendments of the Raising the Bar Bill. However, the committee does not consider that the amendments in the Raising the Bar Bill will resolve all of the issues in the patent system. In the opinion of the committee, serious consideration should also be given to the proposals for legislative enactment of the patentable subject matter test and the general ‘ethical’ exclusion made in the ACIP report on patentable subject matter. Other reforms may also be necessary in the future, particularly in relation to ensuring equitable access to healthcare. In this context, the committee recognises that the Senate Community Affairs References Committee has indicated it will maintain a ‘watching brief’ in relation to the impact of gene patents in Australia.[5] Despite the need for further reform to the patent system, the committee agrees that removing an area of patentable subject matter, as proposed by the Bill, is not an appropriate solution to this complex set of issues. (emphasis and hyperlink supplied)