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Focus: Patents, Designs and Trade Marks

27 April 2007

In this issue: Two significant changes to the schedule of patent fees; new trade mark, patent and design provisions now in force; and a look at upcoming conferences and events.

New fee regime at Australian Patent Office

In brief: As we reported in January 2007, IP Australia has introduced changes to its fees and charges for patents, designs and trade marks. These changes took effect on 1 March 2007 and have resulted in several fees being increased and some being decreased. Most of the increases are relatively modest and unlikely to have a major impact on the overall cost of obtaining and maintaining IP protection. There are, however, two significant changes to the schedule of patent fees. Partner Chris Bird reports.

How does it affect you?

  • Understanding how the new fee structure might impact on the cost of your IP portfolio, and considering appropriate changes in your IP strategy, can help to minimise the effect of these changes.
Acceptance fees

A major fee increase relates to acceptance fees for patent applications. Under the regulations, an official fee is payable at acceptance before an application can proceed to grant. This fee is made up of two components: a flat fee of $140, plus a fee for each accepted claim in excess of 20. This 'per claim' fee has increased from $20 to $100, meaning that for an application with 50 claims the official acceptance fee will be A$3,140 instead of A$740, an increase of A$2,400. For applications with many claims, this can represent a very large increase in the overall cost of securing protection. It should be noted that the new acceptance fees will apply not only to new patent applications, but also to pending applications that had not already been accepted for grant before 1 March 2007.

With this in mind, we recommend that you review the number of claims contained in any pending application, and consider whether the excess claims fee may be reduced (or even avoided) by deleting some of the dependent claims during prosecution. Interestingly, it is possible to have deleted claims subsequently reintroduced into the application by way of a post-acceptance amendment, on payment of a nominal amendment fee (A$250).

In order to ensure our clients have an opportunity to obtain the most effective patent rights - both in terms of scope and strength - it is our practice to review each patent application at entry into the examination stage and to recommend to our client appropriate revision to the specification. This is usually a good point at which to review the number of claims and consider possible deletion of dependent claims. Alternatively, such revision can be made when responding to objections raised in examination reports.

Extensions of time in oppositions

It is common during patent opposition proceedings for parties to require time extensions for serving evidence, particularly bearing in mind the volumes of evidence that are often involved in such matters. The deadlines for each stage of evidence may be relatively easily extended upon payment of extension fees, along with filing an appropriate request. The extension fees have been increased from $150 to $500 for each month or part thereof, apparently reflecting an effort by the Patent Office to speed up patent opposition proceedings.

Please contact us if you have any questions regarding the matter of official fees, or if you would like advice on how to minimise the impact of these fee changes on your portfolio.

New trade mark, patent and design provisions now in force

In brief: In IP Bulletin - December 2006, we reported on provisions of the Trade Marks Amendment Act 2006 (Cth) that came into effect on 23 October 2006, and other provisions that were yet to come into force. The remaining provisions of the Trade Marks Amendment Act relating to trade marks became effective on 27 March 2007. Various amendments in relation to patents and designs (under the Intellectual Property Laws Amendment Act 2006 (Cth), as outlined in our Focus editions of April 2006, June 2006 and August 2006 and IP Bulletin - June 2006), also came into effect on that date. Regulations have now been introduced. Partner Chris Bird and Trade Marks Attorney Peter Ryan outline some of the key changes. 

How does it affect you?

  • These changes have important implications for owners of Australian trade marks, patents and designs, as they amend the Patents Act 1990 (Cth), the Trade Marks Act 1995 (Cth), the Designs Act 2003 (Cth), the Plant Breeder's Rights Act 1994 (Cth) and the Olympic Insignia Protection Act 1987 (Cth), and introduce new regulations in all of those areas.
Trade marks

Changes to the following areas in relation to trade marks came into effect on 27 March 2007 by amendment to the Trade Marks Act (the TM Act) and the Trade Mark Regulations 1995 (Cth) (the TM Regulations):

  • Series applications: applications for series trade marks are now allowed in multiple classes. Where series trade marks were registered before commencement of this provision, the registered owner will be able to apply to the Registrar of Trade Marks (the Registrar) to link those registrations, provided they were for the same series of marks and they share the same filing date. There may be some administrative and cost benefits in linking such registrations. It will now only be possible to file series applications for trade marks that differ in respect of the colour of the marks or other descriptive matter relating to the relevant goods or services, such as statements or representations as to the relevant goods or services themselves, or the price or quality of such goods or services.
  • Divisional applications: it is no longer possible to file a divisional application for part of a trade mark. Divisional applications will only be allowed for the same trade mark in respect of some of the goods and/or services included in the parent application. The amended TM Act confirms that a divisional application takes the priority date of the original 'parent' application, even in situations where there has been a succession of divisional applications.
  • Renewals: there is now only a six-month grace period for trade mark registrations to be renewed after the renewal date, compared with the previous grace period of 12 months.
  • Customs seizure: it is no longer compulsory to provide Customs with a security, where Customs seizes goods on behalf of a trade mark owner. Instead, it may be sufficient to provide appropriate undertakings to Customs.
  • Access to trade mark documents: certain trade mark documents will now be available immediately on request, rather than through the Freedom of Information (FOI) process, where those documents relate to applications filed on or after commencement of this provision. Other documents, including evidence, opposition documents, privileged documents, and court documents, are now specifically deemed to be confidential, and will only be available through the FOI process.
  • Revocation of acceptance: the Registrar may now revoke the acceptance of an application, in situations where there was an error of judgment or omission during examination, such that the application should not have been accepted, and where it is reasonable in the Registrar's view to revoke that acceptance.
  • Revocation of registration: the Registrar now has power to revoke a trade mark registration along similar lines to revoking acceptance as noted above. This new revocation power can only be relied upon within 12 months of the registration date. It does not affect the right of a trade mark owner to voluntarily apply to the Registrar for revocation, or the ability of parties to apply to the Federal Court for revocation under existing provisions.
  • Other trade mark changes: other amendments in relation to trade marks include:
    • implementing changes to the Madrid Protocol, including providing consistency between International Registrations designating Australia, and directly filed applications;
    • updating the list of Paris Convention for the Protection of Industrial Property member countries, by adding Yemen and including separate listings for Serbia and Montenegro;
    • making a number of minor, consequential and transitional amendments; and
    • clarifying the time period for doing certain acts when the Trade Marks Office or a sub-office is closed.
Patents and designs

Changes to the following areas in relation to patents and designs also came into effect on 27 March 2007, through the Intellectual Property Laws Amendment Act, the Intellectual Property Laws Amendment Regulations 2007 (Cth) (the IPLA Regulations), and/or the Trade Marks Amendment Act or TM Regulations:

  • Patents Act and the Patents Regulations 1991 (Cth): amendments in relation to patents include:
    • new provisions relating to additional damages for flagrant infringement. A court may now include an additional amount in an assessment of damages for an infringement of a patent, if a court considers it appropriate to do so having regard to various factors;
    • clarification of the period during which a divisional application can be made from a granted innovation patent;
    • updating the English text of the Patents Regulations 1991 under the Patent Cooperation Treaty as in force in Australia;
    • updating the list of Paris Convention member countries;
    • a number of minor, consequential and transitional amendments; and
    • clarification of the time period for doing certain acts when the Patents Office or a sub-office is closed.
  • Designs Act and the Designs Regulations 2004 (Cth): amendments in relation to designs include:
    • clarification of the time period for doing certain acts when the Design Office or a sub-office is closed;
    • clarification that extensions of time will not apply to acts done in relation to proceedings in a court or a tribunal; and
    • updating the list of Paris Convention member countries, as noted above in relation to trade marks and patents.
Conclusion

The changes to Australian trade mark, patent and design law and practice are likely to have a significant impact on owners of intellectual property in Australia. For further details on these and other changes, please refer to IP Australia's website (www.ipaustralia.gov.au), our Focus and IP Bulletin publications, or contact any member of our team listed below.

Events – INTA Conference 2007

From 28 April to 2 May 2007, Chicago will play host to more than 7000 trade mark professionals from around the world at the 129th Annual Meeting of the International Trademark Association (INTA).

AAR will have six representatives at the INTA meeting: Andrew Butler (Partner and Patent Attorney) and Tim Golder (Partner and Trade Marks Attorney) from our Melbourne office, Jim Dwyer (Partner), Philip Kerr (Partner and Trade Marks Attorney) and Andrew Wiseman (Partner) from our Sydney office, and Ted Marr (Lawyer and Trade Marks Attorney) from our Hong Kong office.

We always enjoy this opportunity to meet up with our clients and our contacts from around the world, and would be pleased to discuss any aspect of the IP services we provide in any of our offices in Australia and Asia with anyone attending this year's meeting. We look forward very much to seeing you there.

If you would like to make contact with an AAR representative prior to or during INTA, we can be contacted at the following email addresses:

Andrew.Butler@aar.com.au

Tim.Golder@aar.com.au

Jim.Dwyer@aar.com.au

Philip.Kerr@aar.com.au

Andrew.Wiseman@aar.com.au

Events – Asian Patent Attorneys Association Annual Meeting

The Asian Patent Attorneys Association (APAA) will be holding its annual meeting this year in Adelaide, the capital of South Australia, from 17-20 November 2007.

As active members of APAA, we look forward to attending what promises to be a very enjoyable and rewarding conference and, of course, to meeting many of our clients and contacts there. If you are planning to attend this meeting, please do take the opportunity to come and visit us in our Sydney or Melbourne office while you are in Australia. Let us know by getting in touch with Trevor Davies or Chris Bird on the contact details listed below.

For further information, please contact:

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