On 30 May 2013, the Australian Parliament was presented with a Bill for an Act to amend legislation relating to intellectual property, called the Intellectual Property Laws Amendment Bill 2013 (report here). The 2013 bill focusses on 5 areas (which were not addressed in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012) 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. In this post, we focus on the sixth Schedule of the bill.
The sixth schedule of the bill contains two parts: Part 1 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, while Part 2 seeks to address a number of oversights in the drafting of the Intellectual Property Laws Amendment Act 2012 (“Raising the Bar Act”).
Proposed changes: Part 1 — Document Retention
Items 1 to 5 of Schedule 6 of the bill, proposes administrative changes under the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003 to repeal document retention provisions which require IP Australia to physically retain patent, trade marks and designs documents for a certain period of time (25 years in some cases). Retention and disposal of documents is governed by the Archives Act 1983.
Commencement: With heaving shelves in the archives at IP Australia HQ in Woden ACT, Part 1 of Schedule 6 (document retention) is due to commence the day after the Bill receives Royal Assent.
Proposed changes: Part 2—Technical amendments
Items 6 to 16 of Part 2 of Schedule 6 of the bill seek to address a number of oversights in the drafting of the Raising the Bar Act. We have summarised each of the changes below. For ease of reference we have also roughly marked up a copy of the Patents Act 1990 with the proposed changes. If you note any errors (or have any suggestions), please let us know here.
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Item 6: Heading Replacement
A heading replacement of section 24 is proposed since amendments made to section 24 by the Raising the Bar Act required section 24(1) to “omit through any publication or use of the invention”. The heading of section 24 (which currently reads: Validity not affected by certain publication or use) is proposed to be updated accordingly.
Commencement: Will commence retrospectively from 15 April 2013.
Item 7: Requests from PCT applicants prior to national phase entry
The Raising the Bar Act introduced new section 29A which is phrased as requiring a Patent Cooperation Treaty (PCT) applicant to meet the requirements of the new subsection 29A(5) (National Phase Entry) by a certain time period. Before the Raising the Bar Act, an international applicant under the PCT could not require that anything be done for the PCT application – unless it entered national phase in Australia (i.e. unless the fees had been paid).
This amendment proposes to revert to the requirement that a PCT applicant cannot request that the Commissioner examine or amend their application until they have provided the Commissioner with a copy of the application and paid the appropriate fees (which was the case prior to the Raising the Bar Act).
Commencement: Due to commence 6 months after the Bill receives the Royal Assent, unless proclaimed into effect earlier.
Item 8: Prescribing period for Paris Convention applications
The Raising the Bar Act introduced new subsection 29B(2) and this subsection is proposed to be amended so that it, in itself, does not refer to the prescribed period for Paris Convention applications (i.e. 12 months) – but rather via subsection 38(1A).
Commencement: Due to commence 6 months after the Bill receives the Royal Assent, unless proclaimed into effect earlier.
Item 9: Subsection Heading
This item proposes to insert a subheading above subsection 40(2) to clarify that the subsection relates to requirements for complete specifications (as does 40(1) ) relating to provisional applications.
Commencement: Due to commence 6 months after the Bill receives the Royal Assent, unless proclaimed into effect earlier.
Item 10: Disclosure requirements for provisional applications for micro-organism inventions
The Raising the Bar Act introduced a new disclosure requirement for provisional applications in subsection 40(1) (i.e. that the provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art). However, no provision was made for meeting the new disclosure requirement in subsection 40(1) in relation to micro-organisms on provisional applications.
The prescribed circumstances under proposed new paragraph 41(1A)(b) will specify the date by which the deposit must be made, as well as other conditions necessary for the benefit of the deposit to be obtained.
Commencement: Due to commence 6 months after the Bill receives the Royal Assent, unless proclaimed into effect earlier.
Item 11: Combination of documents for disclosure of invention
Paragraph 43(2A)(b) of the Patents Act 1990 is proposed to be amended to make it clear that subsection 43(2) refers not only to a prescribed document, but also to multiple prescribed documents considered together.
Commencement: Due to commence 6 months after the Bill receives the Royal Assent, unless proclaimed into effect earlier.
Item 12: Disclosure requirements to support the priority date for micro‑organism inventions
New subsection 43(2B) is proposed to be inserted into the Patents Act 1990 to make it clear that, in relevant circumstances, a properly deposited sample micro-organism can (via a deposit under the Budapest Treaty) be taken into account when determining whether a claimed invention has been disclosed for determining a priority date of the claim.
Commencement: Due to commence 6 months after the Bill receives the Royal Assent, unless proclaimed into effect earlier.
Item 13: Typographic error
Proposal to correct a typo error by inserting ‘and’ at the end of subparagraph 101E(1)(a)(ix) and before 101E(1)(b) of the Patents Act 1990.
Commencement: Due to commence 6 months after the Bill receives the Royal Assent, unless proclaimed into effect earlier.
Item 14: Infringement exemption
Paragraph 119(3)(b) of the Patents Act 1990 is proposed to be amended to correct an inadvertently-created inconsistency between that provision and the related provisions of paragraph 24(1)(a) (grace period provisions).
The Raising the Bar Act widened the grace period provisions to information made publically available – but this was not reflected paragraph 119(3)(b) – the infringement exemptions.
Commencement: Will commence retrospectively from 15 April 2013.
Item 15: Rectification of the Patent Register in respect of entitlement disputes
The Raising the Bar Act introduced new s 191A which allows for the Commissioner to rectify the Register of Patents where there is an error in entitlement to the patent. However, the Commissioner is required under subsection 191A(4) to hear both the parties currently listed on the Register as being entitled to the patent and those people claiming that they should be listed as entitled.
This new section now unintentionally covers the right to a hearing in subsection 191A(4) for other proposed rectifications not related to an entitlement matter.
The proposed change makes it clear that subsection 191A(4) does not apply if the Commissioner proposes to correct some other type of error in the Register (that can be done through section 216 of the Patents Act 1990).
Commencement: Due to commence 6 months after the Bill receives the Royal Assent, unless proclaimed into effect earlier.
WHATS NEXT?
Interestingly, a public hearing was held on 6 June 2012, so we expect a report on the hearing will issue.