IP Australia has released draft legislation implementing the Federal Government's response to the Productivity Commission's inquiry into IP arrangements. Senior Associate Lauren John reports.
Late last year, IP Australia released an exposure draft of the legislation that will partially implement the Government's response to the Productivity Commission's final report on its inquiry into Australia's IP arrangements. The consultation period finished in December 2017. IP Australia received 19 non confidential submissions (which can be read here).
The draft legislation includes, significantly, amendments to:
- commence abolishing the innovation patent system; and
- clarify the circumstances when parallel importation of trade marked goods doesn't infringe a registered trade mark.
Currently, section 123(1) of the Trade Marks Act 1995 (Cth) provides that an importer of trade marked goods won't commit an infringing act if the trade mark was applied to the goods 'by, or with the consent of, the registered owner of the trade mark'. Although expressed quite simply, s123(1)'s interpretation and application have proved challenging.
The legislation's exposure draft proposed replacing s123(1) with a new, and rather wordy, s122A that would apply to any infringement actions brought after it commences. The new provision is intended to reduce the evidentiary burden on the importer (who will only have to establish it was 'reasonable to assume' the trade mark had been applied with consent). A number of submissions IP Australia received raised concerns about s122A's lack of clarity and suggested it may have unintended consequences, so it will be interesting to see if, and how, the Bill addresses those concerns.
The proposed amendments in the exposure draft would see the innovation patent system 'phased out', rather than abolished. The proposed amendments to the Patents Act 1990 (Cth) would take effect 12 months after the amending Act receives Royal Assent – most likely, sometime in 2019. They mean that IP Australia would no longer be able to:
- grant an innovation patent on an application with an effective filing date on or after the day the amendments take effect; or
- certify a claim of an innovation patent with a priority date on or after that day (an innovation patent must be certified before it can be enforced).
The current regime would continue to operate for existing applications. Also, the existing rights to file divisional applications and convert a standard patent to an innovation patent would remain for any patent/application filed before the amendments took effect.
IP Australia has undertaken separate consultation on proposed reforms to implement other aspects of the Government's response, including amending Australia's inventive step requirements for patents. We'll continue to keep you updated on the likely timing and form of any proposed amendments to Australia's IP laws.