IP Australia consults on five policies


IP Australia has opened five simultaneous public consultations on IP policy matters, four of which relate to IP Australia’s proposed implementation of the Government’s response to the Productivity Commission’s 2016 report on Australia’s IP arrangements.

Consultations are now open on:

  1. Amending the inventive step;
  2. Introducing an objects clause;
  3. Amending provisions for Crown use;
  4. Provisions for compulsory licensing of patents; and
  5. Introduction of divisional trade mark applications.

IP Australia says the legislative amendments relating to these issues are proposed for inclusion in a Bill intended for introduction to Parliament in 2018.

Implementation of other measures – such as phasing out of the innovation patent system, the plant breeder’s rights recommendation and the majority of the trade mark recommendations -  covered by the Government’s response to the Productivity Commission (PC) report will be consulted on later in 2017.

Paper 1: Amending inventive step requirements for Australian patents

This paper discusses the proposed implementation of the Government’s response to recommendations 7.2 and 7.3 of the PC Report. The PC recommended that IP Australia further align the inventive step standard for the grant of a patent in Australia with that of the European Patent Office. The Government supported these recommendations, and the paper puts forward options for changes to the Patents Act 1990, and the guidance that would be included in the explanatory materials accompanying the changes.

Paper 2: Introduce an objects clause into the Patents Act 1990

The Government’s response supports the PC recommendation (7.1) that an objects clause be introduced into the Patents Act 1990.

An objects clause provides additional clarity and guidance to the community on the purpose of legislation, assists the courts in interpreting the legislation, and can be used to resolve uncertainty and ambiguity. This paper discusses options for the precise wording of an objects clause to set out the purpose of the patents legislation.

Papers 3 & 4: Amending the provisions for Crown use of patents and designs; and amending the provisions for compulsory licensing of patents

In its response to the PC report, the Government highlighted that in addition to an objects clause, it would also consult on recommendations made by the PC in its 2013 Report, Compulsory Licensing of Patents. These recommendations are intended to ensure that the Crown use and compulsory licensing provisions are working as intended.

Paper 3 discusses options for reform of Crown use provisions for patents and designs. The PC considered that the current provisions were unclear on the purposes for which Crown use may be invoked, and did not sufficiently provide for transparency and accountability in the use of those provisions.

Paper 4 discusses options for the reform of compulsory licensing provisions for patents. The PC considered that there was uncertainty as to how the current provisions applied. 

Paper 5: Introducing divisional applications for international trade marks

This paper discusses the introduction of divisional trade mark applications (divisionals) for International Registrations Designating Australia (IRDAs) filed under the Madrid Protocol.

AusBiotech will be making a submission in regard to the Government’s response to the PC Report recommendations (Papers 1 – 4) and invites members to submit comments for inclusion. 

IP Australia will consider the submissions, and undertake further consultation on an Exposure Draft of the legislation.

For further information, see IP Australia’s website. For ease of access, the papers are available as a single document here.

Submissions to IP Australia are due 17 November 2017, and AusBiotech members are asked to submit comment by 10 November 2017.