As has been widely reported, at the end of November last year, IP Australia released for public feedback an ‘exposure draft’ of a Bill which, when enacted, would become the Intellectual Property Laws Amendment Act 2017. This piece of proposed legislation would make a series of changes to the rules and administrative arrangements for all IP rights in Australia.
The consultation closes on 22 January 2017, and we would encourage our clients to familiarise themselves with the proposed changes in order to make an informed decision as to whether to submit feedback in the next two weeks.
Purpose and Summary
The draft legislation is designed to “align and streamline the processes for obtaining, maintaining and challenging intellectual property (IP) rights”. In short, it mostly aims to harmonise the procedures and terminology used between patents, trade marks, registered designs and Plant Breeders’ Rights in order to eliminate any unnecessary differences. IP Australia believes that by making the processes for each type of IP right more similar to the others, it can reduce complexity and cost for IP rights holders, and lessen the administrative burden for the government.
Some of the more material amendments are explained in brief below.
Extensions of time
The most significant and widely applicable changes in the Bill relate to extensions of time for patent applications. Under the present system there is no formal deadline during which an extension of time must be applied for, and the Commisioner can exercise considerable discretion as to whether or not to grant an extension of time. Further, extensions of time can be requested on the grounds that the deadline was not met “despite due care”, as well as on the grounds of an error or omission by the applicant and/or their agent; and of circumstances beyond the control of the person concerned.
Under the amended legislation ‘despite due care’ would no longer be available as a ground for an extension of time. A formal deadline of two months would be introduced for applying for extensions of time – two months from the applicant discovering the relevant error or omission, or two months from the end of the circumstances beyond the person’s control, depending on which ground is claimed.
However, balancing this new requirement, the amended legislation would also remove the Commissioner’s discretion to refuse applications for an extension of time which meet the requirements laid out in the Act.
Extensions would be divided into two types. Extensions of time of less than 3 months would be automatically accepted following an automated formalities check. No declaration would be required to support these applications, only a written statement of justification. They would then be advertised for one month, during which time objections to the extension could be filed. Objections would be dealt with in most cases by a streamlined process of written submissions. Extensions of more than 3 months would require a formal declaration, and would be dealt with under the current system of human review and formal opposition proceedings.
Finally, the amended legislation would provide greater rights for third parties who chose to exploit a patented invention during a period when that patent application had lapsed or the right ceased, if the patent is subsequently restored. A person or entity which began exploiting the invention while its patent application was lapsed or its right ceased would be allowed to continue to exploit the invention, and to pass on that right to exploit the invention to another person (such as a successor company) after it is restored. In another significant change to existing practice, this right would not depend on the person in question being aware that the invention was the subject of a lapsed patent application or ceased patent right.
In addition to harmonising renewals terminology between rights, one material change and one significant clarification are proposed to patent renewals:
- The new Bill removes the option to pay multiple years’ renewal fees for a patent in a single payment. This was previously common practice in technology areas such as pharmaceuticals. Under the amended Act, it would only be possible to pay renewal fees 12 months in advance.
- The amended Act would clarify that in cases where a renewal fee is paid after the anniversary of grant but during the subsequent six month grace period, the application or right should be considered to have been continuously in force (rather than having lapsed and been restored).
Examination & Re-examination
The existing system allows for ‘re-examination’ for most types of IP rights – a process whereby IP Australia can review an already granted right. However, these systems are not consistent with each other – in particular the re-examination process for registered designs is materially different. The amended legislation would introduce a clarified and consistent re-examination process for patents, innovation patents and registered designs, including a formal six-month time frame for any objections to be overcome, and clear guidelines on the relationship between re-examination and oppositions. Notably, the system would specify that multiple examination reports can issue within the six month time frame.
The Bill would also allow third parties to request examination of a patent application directly, as is the case currently for innovation patents. The existing system for patents requires a circuitous process of requesting that the Commissioner direct the applicant to request examination.
Digital Communication & Computerised decision making
A number of the amendments relate to allowing the Office to make greater use of digital communications and technology. These changes include:
- The removal of various provisions requiring notifications ‘in writing’ as well as new powers for the Commissioner to choose how documents can be filed and fees paid, to allow for more use of digital and online formats in communications with IP Australia.
- Removing the requirement for physical signatures on some low-risk requests to the Office, for example to request an international patent application be treated as a standard application.
- Removing the requirement to sell physical copies of patent specifications (which are also available online).
Perhaps most interestingly, the amendments would allow ‘computerised decision-making’ by IP Australia in cases where little or no human judgement in required. This is expected to be used, for example, in streamlining strict formalities checks. The amendments also provide a safety mechanism by which IP Australia could replace decisions made automatically by a computer, as well as identifying a tribunal to which affected parties could appeal if adversely affected by an incorrect computer decision.
Most of the amendments in the proposed Bill are straightforward and uncontroversial administrative matters relating to terminology and process. However, as outlined above, there are a small number of substantive and important changes to the system, particularly in the area of extensions of time.
We would encourage any IP holders who might be affected by the above proposed changes to contact their qualified patent attorney as soon as possible to discuss them further, and decide whether it is necessary to make a submission on the exposure draft. Less than two weeks remain before the 22 January deadline.