Fixing the Bar & Moving the Goalposts – the OTHER IP Laws Amendment Bill (2013)

Today, the Australian Parliament was presented a Bill for an Act to amend legislation relating to intellectual property, called the Intellectual Property Laws Amendment Bill 2013.  This is not to be confused with the Intellectual Property Laws Amendment Act 2012 (aka the Raising the Bar legislation) which came into effect on 15 April 2013.

Implementation of the Intellectual Property Laws Amendment Bill 2013 (in any form) is some time off.

Live Minutes from Parliament House on 30 MAY 2013
Live Minutes from Parliament House on 30 MAY 2013

Below is a snap shot of the Explanatory memorandum.  We will be providing a more detailed post on each of the Schedules on the blog in the coming days.

The 2013 bill focusses on 5 areas (which were not addressed in the Raising the Bar legislation) and also seeks to clarify some of the Raising the Bar provisions on each of the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003 and the Plant Breeder’s Rights Act 1994.

Schedule 1—Crown use

The bill proposes implementing recommendations in the Productivity Commission’s March 2013 Report on “Compulsory Licensing of Patents”, namely to amend existing crown use provisions to clarify the scope of ‘Crown use’, the extent to which the phrase ‘for the services of the Commonwealth or a State’ can include non-government bodies and to provide more transparency in the use of the “Crown use” provisions.

Schedule 2—TRIPS Protocol interim waiver

Schedule 3—TRIPS Protocol: later commencing amendments

The bill proposes amendments to the Patents Act 1990 to allow Australian pharmaceutical manufacturers apply to the Federal Court for a compulsory licence to manufacture generic versions of patented medicines (under specific conditions) and export these medicines to developing countries.  Compensation for the patent holder will be negotiated, although there appears to be no indication who will negotiate adequate compensation or how such negotiation will occur.

Schedule 4—Plant Breeder’s Rights Act 1994: Federal Circuit Court

A proposed amendment to allow the Federal Circuit Court (previously known as the Federal Magistrates Court) to deal with PBR infringement matters.  Aim is to be a cheaper and faster option than the Federal Court.

Schedule 5—Australia New Zealand Single Economic Market 

A single patent Examination model is proposed such that if separate patent applications for the same invention are filed in both Australia and New Zealand, then both applications are examined by a single examiner in either Australia or New Zealand (but taking account of the separate national laws).

Proposed implementation of a bilateral arrangement between the Australian and New Zealand governments for the trans-Tasman regulation of patent attorneys in both Australia and New Zealand.  Effectively this will allow for a single register of patent attorneys, a single set of qualifications for registration, a single governing Board and single Disciplinary tribunal.

As part of this, the requirement that an individual seeking registration as a patent attorney be ordinarily resident in Australia will be repealed.

Schedule 6—Other Amendments

The bill proposes administrative changes to the Patents, Trade Marks and the Designs Acts to repeal document retention provisions which currently require IP Australia to physically retain patent, trade marks and designs documents for a certain period of time (25 years in some cases).

This bill also proposes a number of technical amendments to the Patents Act to address oversights in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

To find out more about the changes proposed, please contact us.