More copyright reforms

Yesterday, the Government announced its plans for reforms to the Copyright Act 1968 to improve “access”.

No fair use – so much for all those expert reports!

Instead, according to the Press Release, the amendments will involve:

  • a new fair dealing exception for non-commercial quotation;
  • a limited liability scheme for use of orphan works;
  • amendments to the library and archive exceptions;
  • amendments to the educational use exceptions;
  • streamlining of the government use provisions.

There is a press release here. Apparently, the Government is planning to release an exposure draft of the proposed legislation later this year.

Lid dip, Carolyn Hough

Productivity Commission Response No 2 – No 2

The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 received Royal Assent on 26 February 2020.

The Act as actually passed (with amendments) is available here (to get the text from Austlii when I went there, I had to download the RTF or plain text format). There is also now a Revised Explanatory Memorandum.

As assented to, section 2 now prescribes that the abolition of the innovation patent regime will occur 18 months after Royal Assent — 26 August 2021.

(Remember, this is achieved by specifying an additional ground for “the formalities check” in new s 52(3) – an application for an innovation patent may pass “the formalities check” only if the date of the patent would be before [26 August 2021]. There is presumably a good reason why it doesn’t just say The Commissioner must reject the application for an innovation patent if the date of the patent would be on or after [26 August 2021].)

The Revised Explanatory Memorandum explains that 18 months has been chosen to ensure that persons who have filed a provisional application or a basic application under the PCT are not prejudiced. Such a person has up to 12 months from the filing date to file a complete application in Australia and an additional 6 months has been allowed to allow them enough time to make a decision.

As you will recall both ACIP and the Productivity Commission recommended abolition of the innovation patent. The Revised Explanatory Memorandum explains that the Government has accepted those recommendations because (footnotes omitted):

The policy intention of the IPS was to encourage SMEs to innovate and benefit from their scientific progress. In practice however, the innovation patent system has been found to have limited use by SMEs as 74 per cent of SMEs and private inventors filed once and never again; 83 per cent never received an enforceable right; and 78 per cent let their innovation patent expire early rather than pay the minor cost of the renewal fee. The Productivity Commission found that the majority of SMEs who use the innovation patent system do not obtain value from it, and that the system imposes significant costs on third parties and the broader Australian community. Given this, the innovation patent system has shown to be unlikely to provide net benefits to the Australian community or to the SMEs who are the intended beneficiaries of the system.

Section 4 in the Act as passed also requires the Minister to establish a review of the accessibility of patents for small and medium enterprises within 3 months (i.e. by 26 May 2020). Matters the review should consider include:

(a) the cost of applications for patents; and

(b) processing times of patents; and

(c) advice provided by the Australian Government with respect to the patent application process; and

(d) awareness of the patent application process.

The written report from the review must be submitted to the Minister within 12 months of commencement and the Minister must table it in both Houses of Parliament within 15 sitting days of receiving the report.

In addition to these matters, the Act also:

  • introduces an objects clause into the Patents Act 1990 – Sch 1 Part 1;

The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.

  • revises the Crown use provisions in both the Patents Act and the Designs Act – Sch 2 & 3;
  • amends the compulsory licence provisions for patents to be based on a “public interest” test rather than a failure to meet the reasonable requirements of the public in Australia – Sch 4;
  • provides for electronic seals in the Patents and Trade Marks Offices – Sch 5;
  • permits objection to ‘omnibus claims’ to be raised at opposition, re-examination and revocation stages as well as examination – Sch 6;
  • permits the Commissioner of Patents to redact information (i.e. parts of documents) as well as documents where confidentiality requires it – Sch 7; and
  • amends the circumstances a translation of a patent application originally in a foreign language will require a certificate of verification – Sch 8.

All the amendments commenced on 27 February 2020 except for the abolition of innovation patents and Sch 8. The timing of the abolition of innovation patents has been discussed above. Sch. 9 commences on 26 August 2020.

Productivity Commission Response No 2

Parliament has now passed the wonderfully named Intellectual Property Law Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019. Text here[1] and EM here.

When enacted, the “Act” will amongst other things:

(a) insert an objects clause, new section 2A, into the Patents Act:

The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.

That clears things up nicely doesn’t it?

(b) suppress the granting of more “innovation” patents;

(c) harmonise the regimes for Crown use of patents and registered designs;

(d) introduces a revised regime for compulsory licensing of patents.

The suffocation of innovation patents will be achieved by introducing new sub-section 52(3) into the Patents Act.

Sub-section 52(3) will make it a requirement of the formalities check that the date of the patent (if granted) must be a date before the date the amendment came into force.

According to the form of the “Act” on Parliament’s website sub-section 52(3) will come into force 12 months after the “Act” receives Royal Assent.[2]

Once the sub-section comes into force, therefore, it will be possible to seek further innovation patents only where they are based on filings with a date before the commencement date so, for example, a divisional application.


  1. The bill does not become an Act until it receives the Royal Assent.  ?
  2. There had been reports that the phase out period would be extended to 18 months, but that does not appear to be reflected in the document on Parliament’s website. These reports also indicated that there was to be a review of the impact of “abolition” on Australian small and medium enterprises.  ?

Productivity Commission implementation part 2

IP Australia has released draft legislation for the proposed Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2018.

Schedule 1 of the proposed bill includes measures to:

  • amend inventive step requirements for Australian patents (to bring them into line with the imagined approach of the EPO;
  • introduce an objects clause into the Patents Act 1990
  • phase out the abomination innovation patent system.

Well, 1 out of 3 is not so bad.

Schedules 2 – 4 propose the mooted amendments to the Crown use provisions (both patents and designs) and the compulsory licensing provisions.

There are also streamlining measures and “technical improvements” in schedules 5 to 7.

Download the draft bill, the draft EM and consultation questions from here.

Written submissions are due by 31 August 2018.

Government consultation papers on patent and trade marks

Government consultation papers on patent and trade marks

Government consultation papers on patent and trade marks

The Australian government has issued 5 consultation papers on how to implement some of the recommendations it has accepted from the Productivity Commission’s Final Report into Intellectual Property Arrangements:

Submissions are required by 17 November 2017 (with a view to introducing a bill as soon as possible).

I can’t say that introducing yet another inventive step test (there are 4 if you count common general knowledge alone – depending on which regime applies to the patent in question) makes much sense.

Most of the Productivity Commission’s reasoning was based on the common general knowledge alone test used in Alphapharm.1 It did find, however, that there had not been much change in the Commissioner’s rate of granting patents relative to the EPO since the Raising the Bar act was passed. However, so far as I could see, it doesn’t tell us how many applications the Commissioner had examined under the Raising the Bar regime and you would have to guess a large number were still under the 2001 regime.2

Essentially, the Raising the Bar regime allows any piece of prior art to be combined with common general knowledge to test obviousness. It also allows prior art information to be combined in the same way as one might expect an English court or an EPO board would.3 The Raising the Bar regime should in fact operate just like the UK/EPC regime and one would have thought we should give it a good chance to work!

  1. See e.g. the reliance on Angiotech Pharmaceuticals v Conor Medsystems Inc. [2007 EWCA 5 at [43]. ??
  2. The Merial case is the only judicial consideration I am aware of applying the regime introduced in 2001 but, if you know of others, let me know. ??
  3. See e.g. KCI Licensing v Smith & Nephew [2010 EWCA Civ 1260 at 6. ??

 

Crown use

No, it’s not the long awaited response to the CLRC’s report; instead, IP Australia and the Attorney-General’s Department have published an information sheet about Crown Use of intellectual property (in Australia).

As you will already know all about this, it could be a useful starter for your clients.

Read the glossy (pdf) here.