Update on changes to Australia's IP laws

By Miriam Stiel
Industrials Intellectual Property Patents & Trade Marks

In brief

Federal Parliament is considering a Bill to amend Australia's IP laws to implement some aspects of the Government's response to the Productivity Commission's (PC) inquiry into IP arrangements. IP Australia has also released its response to public consultation on several other of the PC's recommendations, including proposed changes to the inventive step requirements for Australian patents. Senior Associate Lauren John reports.

The Bill

We've previously discussed the exposure draft of the legislation to implement partially the Federal Government's response to the PC's final report on its inquiry into Australia's IP arrangements. IP Australia recently released its response to the public consultation on the exposure draft and, in early April, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 was introduced to the House of Representatives.

The Bill includes amendments to:

  • clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark;
  • reduce the grace period for filing non-use applications under the Trade Marks Act 1995 (Cth) from five to three years; and
  • various IP Acts, to allow the court to award additional damages in relation to unjustified threats of infringement.

Curiously, the Bill omits amendments to 'phase out' the innovation patents system that had been included in the exposure draft. Only weeks after confirming its decision to proceed with the abolition of innovation patents, IP Australia has announced that the Government will undertake 'further industry consultation' to understand better the needs of innovative SMEs before the phase out occurs.

As to the parallel importation amendments, IP Australia stated that a number of the submissions it received expressed concerns about the new s122A, particularly the requirement that it must have been 'reasonable for the person to assume' that the mark had been applied or used with the relevant consent. The Bill contains a revised form of s122A, which:

  • requires the parallel importer to make 'reasonable inquiries in relation to the trade mark' before the time of trade mark use; and
  • amends the 'reasonable to assume' limb, so that the parallel importer must establish that 'at the time of use, a reasonable person, after making those inquiries, would have concluded that the trade mark had been applied…' with the relevant consent.

Outcome of consultation on other aspects of Government's response

There was a separate consultation last year in relation to the Government's response to the PC's recommendations from the most recent inquiry and also previous IP inquiries. IP Australia recently released its response to the consultation, after receiving 18 non-confidential submissions.

Among other matters, IP Australia proposes to amend Australia's inventive step requirements for patents, with plans to introduce a Bill during the spring 2018 parliamentary period. Controversially, it proposes to amend s7(2) of the Patents Act 1990 (Cth) to reflect Art 56 of the European Patent Convention and to amend the definition of 'prior art base' for inventive step purposes. This is despite 14 of 15 submissions on that subject opposing any changes to the requirements, with many expressing concern that insufficient time has elapsed to evaluate the full impact of the 'Raising the Bar' reforms in 2013.

The proposed new IP laws will have significant impacts for businesses, and we will continue to keep you updated on developments.