Draft Regulator Performance Bill Includes Fine Tuning of IP Legislation
The Australian Government is consulting on the exposure draft of the Regulator Performance Omnibus Bill 2022 which includes proposed clarificational and streamlining amendments to the Trade Marks Act 1995, Patents Act 1990 and Olympic Insignia Protection Act 1987.
The proposed amendments to the above Acts are contained in Part 4 of Schedule 5 of the exposure draft Bill, with Part 4 split into 6 divisions. If adopted the relevant proposed amendments would only apply where the amended qualifying criteria is satisfied after the commencement date. The consultation period closes on 14th January 2022.
The 1st division would change the Olympic Insignia Protection Act (OIP Act) to make it clear that the International Olympic Committee (IOC) and the Australian Olympic Committee (AOC) can register their own insignia as trade marks, and to provide clearer authority for the rejection of trade mark applications not authorised by these bodies. Section 42(b) of the Trade Marks Act (TM Act) provides that a trade mark application must be rejected if use of the mark would be contrary to law. However, currently the OIP Act prevents registration of trade marks containing relevant Olympic insignia, yet does not deem that use of such Olympic insignia is contrary to law. Clarification is sought to be achieved by defining what a protected trade mark is for the purposes of the OIP Act and then specifying that the use of such trade marks is contrary to law unless it is by the IOC, AOC or a person authorised by those bodies. This will permit registration of authorised Olympic insignia trade marks and prevent unauthorised registration and use of such trade marks.
Division 2 concerns late renewal of a trade mark that is registered more than 10-years after the application date. When such registrations occur the owner is notified that the renewal fees need to be paid within 2-months of the registration date. Currently, if the owner does not renew within that 2-month period they can late renew the registration within a further period of 10-months. It is proposed to reduce that further period to 6-months so it aligns with the grace period for standard renewals.
Division 3 concerns rare occasions in which the Registrar fails to recognise that a component of a notice of opposition has been validly filed and registers the mark. Currently section 84B of the TM Act allows registrations to be revoked if a notice of opposition has been filed and the Registrar becomes aware of the failure within one-month of the registration date. However, a notice of opposition is only taken to be filed if both the notice of intention to oppose and the statement of grounds and particulars have been filed. It is proposed to amend section 84B to allow revocation where only a component of the notice of opposition has been validly filed.
Division 4 concerns the ability to restore a trade mark to the register when it has been removed from the register on account of steps not being taken in time by an opponent to a non-use action. Currently section 98 requires restoration if an extension of time is granted for filing a notice of opposition and the restoration application is filed within that extended period. It is proposed to widen section 98 by requiring restoration where other related extensions of time are granted such as for filing evidence or requesting a hearing and the action is done within that extended period.
Division 5 concerns ceasing publication of the Official Journal. It is considered that the Official Journal is no longer required as the online trade mark database records and allows access to any information that has been included in the Official Journal. Information will instead be required to be published in the online database in accordance with the TM Regulations.
Division 6 concerns transitional and savings provisions relating to the repealed Patents Act 1952. The last patent under that Act expired in February 2016 and the 6-year statutory limitation period expires in February 2022. It is proposed to omit or repeal spent transitional and savings provisions relating to that Act.
Consultation on Trans-Tasman Patent Attorney Regulation Regime Launched
After nearly 5-years of trans-Tasman regulation of patent attorneys IP Australia has launched a consultation as part of its review of the system, with responses due by 2nd February 2022.
Back in February 2017 the patent attorney professions in Australia and New Zealand were melded together by way of legislation in each country providing for a joint patent attorney profession and the establishment of the Trans-Tasman Attorneys Board (Board) and Disciplinary Tribunal (Tribunal). The impetus for that legislation stemmed from the initial somewhat ad hoc establishment of a joint patent attorney regulation regime when in March 2013 they entered an Arrangement relating to Trans-Tasman Regulation of Patent Attorneys (Arrangement). Under the Arrangement New Zealand applied the Australian regulatory regime.
The review (and consultation) are focussed around six objectives from the Arrangement, namely:
A. strengthen the relationship between Australia and New Zealand;
B. provide a joint regulatory regime for patent attorneys in Australia and New Zealand;
C. allow economies of scale in institutional arrangements;
D. minimise regulatory and business compliance costs;
E. increase business confidence in the quality and standard of service provided by patent attorneys; and
F. facilitate competition in the market for patent attorney services.
Responses are sought in relation to the following questions:
Q1. How has the joint regulatory regime impacted upon the relationship between Australia and New Zealand?
Q2. How has the joint registration scheme impacted upon the availability of patent attorney services in Australia and New Zealand?
Q3. What improvements, if any, could be made to the way in which the Board operates?
Q4. What other actions, if any, could be undertaken to improve the economies of scale in institutional arrangements under the joint registration scheme?
Q5. How has the joint registration scheme been effective in reducing the regulatory and business compliance cost for persons practicing as patent attorneys?
Q6. Should any changes be considered to further facilitate reducing compliance costs and why?
Q7. How are the current qualifications and training requirements impacting on those wanting to register and practice as patent attorneys and, therefore, on the number of attorneys available to service the needs of innovative businesses in Australia and New Zealand?
Q8. What changes could be made to the qualifications and training requirements to, for example, increase their accessibility and reduce the time and costs to candidates to qualify for registration?
Q9. Do the regime’s qualifications and training requirements strike the correct balance between ensuring quality of services provided by new entrants to the profession and the availability and affordability of patent attorney services for businesses? If not, what changes should be considered?
Q10. Are the current CPE requirements sufficient to ensure the quality of patent attorney services? Are there any improvements which could be made to the CPE framework?
Q11. What would be the costs and benefits of the Board and Secretariat undertaking a more coordinated and proactive approach to supporting compliance with the code of conduct by patent attorneys? How might the Board and Secretariat undertake a more coordinated and proactive approach?
Q12. Is the Code of Conduct an effective mechanism for regulating attorney conduct and providing confidence in the standards of the profession?
Q13. Are there any more suitable alternatives to a Code of Conduct as a means of regulating attorney conduct?
Q14. What are the costs and benefits from having the disciplinary regime apply to patent attorneys after they have either voluntarily suspended or removed themselves from the register? What might be reasonable sanctions for misconduct for attorneys who have left the profession?
Q15. What would be the costs and benefits from placing a bar on reregistration of attorneys where they have previously suspended or removed themselves from registration while disciplinary proceedings were underway? If a bar were to be imposed, what should that bar be?
Q16. What would be the costs and benefits for the regime from providing more capacity and guidance for Board investigations?
Q17. Would providing more information to businesses about the trans-Tasman regime assist in facilitating attorneys practising across both countries? If so, who should be providing this information and to whom?
Q18. What improvements to the Trans-Tasman patent attorney regime should be made to facilitate SMEs having access to more affordable patent attorney services?
Q19. What other issues, if any, have you experienced with either the operation of the joint registration scheme or the services provided by patent attorneys? How might those issues be addressed?
Q20. What are the costs and benefits of the operation of the trans-Tasman regulatory regime also encompassing of regulation trade marks attorneys in Australia?
Q21. What improvements could be made to the regulation of trade marks attorneys in Australia?
Considerations When Choosing the PCT International Searching Authority
Most of the 116 PCT Contracting States and Regions that act as Receiving Offices (ROs) for PCT International Phase applications deem more than one International Searching Authority (ISA) to be competent to undertake the international search. This is similarly the case for the 41 PCT Contracting States that do not act as ROs. The table below gives a breakdown of the current 157 PCT Contracting States and Regions according to the number of ISAs that are deemed competent to undertake the international search.
# of ISAs Deemed Competent: No Info / 1 / 2 / 3 / 4 / 5 / 6 / 7 / 8
# of States and Regions: 2 / 31 / 36 / 27 / 34 / 14 / 5 / 4 / 4
Nearly all of the ROs that deem one ISA to be competent specify the European Patent Office (EPO) as that ISA. Most of those are EPC member states or allow the extension or validation of a European Patent. Interestingly, despite Austria being an ISA only the EPO can be an ISA when Austria is the RO. The other ROs that deem one ISA to be competent are Canada with the Canadian IPO being the ISA and Papua New Guinea with IP Australia being the ISA.
From WIPO IP statistics it can be seen that Asian countries are increasingly dominant in patent filings. In 2020 51.7% of PCT International Phase applications had the IPOs of China, Japan, South Korea or Singapore as the RO, up from 49.8% in 2019 and 48.1% in 2018. Outside of the PCT system, for direct patent filings by residents 78.5% of the worldwide total in 2020 was made in the IPOs of those four countries, up from 76.9% in 2019 and 78.4% in 2018. It is further noteworthy that direct filings by residents in China, Japan and South Korea range from 10 – 20 times the number of direct filings by non-residents in each of those countries. Also, residents of China, Japan and South Korea file significantly more applications in their home country compared to what they file abroad. The IPOs of China, Japan, South Korea and Singapore also act as ISAs for PCT International Applications and collectively accounted for 55.2% of ISA designations in 2020, up from 53.6% in 2019.
Given these patterns and trends patent searches not adequately covering the patent databases of those four countries are increasingly unlikely to be robust. As machine translation still needs improvement there is likely to be mounting pressure to have the international search conducted by one of those four IPOs. Yet currently, apart from those four countries, only 28 other PCT Contracting States allow the IPO of one or more of those four countries to be an ISA. While there is a supplementary search option under the PCT, of those four IPOs only the Singapore IPO provides a supplementary search and it has been barely utilised, with just 2 performed in 2020 and 4 in 2019.
WIPO has recently outlined a list of factors to consider when choosing between the available ISA’s, including:
- If the applicant is a national of a different contracting state to the one they are resident in they may wish to consider filing in the RO associated with the state they are a national of if one of the ISAs associated with that RO is considered preferable to the ISAs associated with the state they are resident in.
- If the application is filed in a language that is not accepted by the preferred ISA, then a translation will need to be provided to the ISA.
- The search fees charged by different ISAs can vary considerably.
- There is variation in the quality and timeliness of international searches carried out by the different ISAs as given in the PCT International Authority Quality Reports and timeliness statistics reproduced in the PCT Yearly Review.
- PCT Rule 39 allows ISA to not search an international application if its subject matter is listed in items (i) to (vi) of that Rule – which covers generally excluded subject matter. Some ISAs have indicated that they will search such subject matter.
- The available choices for the IPEA may be constrained by the choice of ISA.
- Choosing an ISA that can readily search prior art in a region that is known to be strong in the relevant field of technology.
- Choosing an ISA that can readily search prior art in key states where national phase will be entered.
- Some ISAs have PCT Patent Prosecution Highway agreements with particular states, which could prove beneficial during national phase.
- A Supplementary International Search cannot be requested via the chosen ISA.