Submissions Sought on Exposure Drafts

** UPDATE: Submissions can now be made up until 6th February 2017. **

The Bill would amend all of the intellectual property Acts with the aim of improving and streamlining the administration of the Australian IP system by reducing regulatory costs and better meeting the needs of businesses interacting with the system – with a particular focus on assisting small to medium enterprises. Currently there are a number of different administrative processes and rules specific to each IP right. The Bill will establish similar processes and where possible use the same terminology for obtaining, maintaining and challenging the different IP rights while also enabling greater use of electronic systems to manage and monitor IP rights.

Creating certainty for both applicants and third parties around time periods and extensions of time is a particular focus. The main proposed changes in this respect are to:

• repeal the ‘despite due care’ extension for patents;
• remove the Commissioner’s and Registrar’s discretion for all general extensions, for all rights. This will simplify the process and ensure compliance with the Patent Law Treaty and Patent Cooperation Treaty;
• require all requests for extensions to be filed within two months of the removal of the cause of the failure to comply, to ensure there are no unreasonable delays;
• improve the compensation for third parties that use inventions when a patent lapsed or ceased to reduce the burden on third parties;
• expand the protection against infringement for third parties that use a trade mark while it was ceased to include while a trade mark application was lapsed;
• introduce a streamlined process for short extensions, but ensure IP Australia can review and remake a decision on an extension of time;
• prevent applicants from obtaining consecutive ‘short’ extensions for the same action;
• provide general extensions and corresponding third party protection for PBRs.

The Bill empowers the Commissioner and Registrars to determine the preferred means for filing and fee payments and the Regulations allow for fees to be reduced when paid by the preferred means.

For the designs, trade marks and Olympic insignia protection legislation the Bill will:

• remove the requirements to publish Official Journals and replace that with the requirement for IP Australia to publish or give information via IP Australia’s website or by other electronic means; and
• have some time periods commence or end from the actioned date rather than the advertised date.

The Bill will allow design and trade mark applicants to amend certain administrative details of their applications themselves prior to registration in a single step, provided it does not change the identity of the applicant. The Registrar will be allowed to correct obvious errors in such administrative details such as misspellings of names or addresses, with the applicant being subsequently notified.

The Bill will remove the current applicant signature requirements in the Patents Act of paragraphs 151(4)(c) (request to reinstate an application as an international application) and 176(c) (request to treat a PCT application as a standard application). These are considered unnecessary on account of the requests not involving significant risk of unauthorised actions taking place.

The Bill will enable the use of automated systems to make decisions or undertake actions relating to the exercise of a delegate’s power or fulfilment of a delegate’s obligation. Such decisions will be limited to those listed in a yet to be made legislative instrument, and will be subject to review if incorrectly made.

Third parties will be able to request examination of a patent application directly, rather than having to request the Commissioner to require the applicant to request examination. The fee for requesting examination would still be shared evenly when initiated by a third party.

In anticipation of the PCT Union allowing patent specification drawings to be in colour the provisions relating to formalities will be amended to allow the Commissioner to prescribe the formalities requirements for complete patent specifications.

Author: Quinn Miller