Second round of changes to Australia's IP laws released for comment

By Miriam Stiel
Industrials Intellectual Property Patents & Trade Marks

In brief

IP Australia has released draft legislation to implement the second part of the Government's response to the Productivity Commission's inquiry into IP arrangements. Senior Associate Lauren John reports.

IP Australia has released an exposure draft of the legislation that will implement the second part of the Federal Government's response to the Productivity Commission's final report on its inquiry into Australia's IP arrangements. We outline the key changes below. IP Australia is accepting submissions on the exposure draft until 31 August 2018. We've previously discussed the Bill to implement the first part of the Government's response, which has since passed both Houses of Parliament.

The exposure draft includes significant amendments to the Patents Act, including:

  • Amending the inventive step requirements. The current s7(2), which says that 'an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious…', would be amended to say 'an invention is taken to involve an inventive step when compared with the prior art base if the invention is not obvious…'.
  • Introducing an objects clause. The proposed objects clause provides that the object of the Patents Act is, amongst other things, to provide a patent system in Australia that 'promotes economic wellbeing through technological innovation'. IP Australia says the clause is a 'broad guiding statement' about the benefits of the patent system, rather than an indication that the grant of any specific patent should achieve the stated objects.
  • Abolishing the innovation patent system. 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. The current regime would continue to operate for existing applications and the 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.
  • Amending the Crown use provisions. A new s160A would extend authorisation to any use which is necessary for the proper provision of services where those services are 'primarily provided or funded by' the Commonwealth or a State/Territory. A new s163, which provides a general rule for Crown use in non-emergency situations, would require the relevant authority to first attempt for a reasonable period to negotiate with the patent owner for authorisation to exploit the invention on reasonable terms.
  • Amending the compulsory licensing provisions. The 'reasonable requirements of the public' test would be replaced with a 'public interest' test when the Court considers an application for a compulsory licence. The amendments would address the problems with the current provisions as they relate to compulsory licences to exploit dependent patents, by clarifying that only the patentee of a dependent patent can seek a compulsory licence over the use of the original patent.

You can read more about the proposed amendments in our publication Proposed changes to the Australian Patents Act, and how they will affect you.

We'll continue to keep you updated on the progress of the changes to Australia's IP laws.