post-grant enforcement

Government responses to ACIP enforcement reviews

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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).

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ACIP: Post grant patent enforcement

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ACIP’s interim report on Post-Grant Patent Enforcement Strategies is now available on the internet (pdf).

The main recommendation is that:

Proposal 1: That IP Australia establish an IP dispute resolution centre along the lines of WIPO’s Arbitration and Mediation Center, which in the first instance focuses on patent disputes. Funding for the centre should be on a “user pays” basis.

A number of “implementation” recommendations hang off that. For example:

Proposal 2: That IP Australia establish a validity and infringement opinion service (taking into account the needs of SMEs), along similar lines to that provided by the UKIPO, and incorporated within the IP dispute resolution centre.

Proposal 4: That IP Australia establish, within the IP dispute resolution centre, a determinative ADR process in the form of a Patent Tribunal along the following lines:

(a) each Tribunal hearing panel to comprise up to 3 people, integrating legal and technical expertise;

(b) Tribunal hearing panel members to be drawn from the register of experts established under Proposal 3;

(c) patent attorneys to have a right to appear;

(d) the Tribunal to have more streamlined procedures and simplified evidentiary requirements;

(e) the Tribunal to take a pro-active and inquisitorial role;

(f) mechanisms be introduced to encourage parties to comply with the Tribunal’s determinations, and to discourage parties from using the courts instead of the Tribunal where it would be appropriate to do so; and

(g) that the effectiveness of the Patent Tribunal be monitored from its date of establishment.

Also, there should be a power of customs’ seizure (as already exist for copyright and trade marks).

Submissions need to be in by Wednesday 30 September 2009.

Interim Report (pdf); press release (pdf too)

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