Australia’s draft intellectual property legislation proposes changes to the Australian IP system
Monday 13th February 2017
Article written by: Kate Giddens
Late last year the Intellectual Property Office of Australia released an Exposure Draft of the Intellectual Property Laws Amendment Bill 2017 and the Intellectual Property Laws Amendment Regulations 2017.The stated purpose of the draft Bill is to improve the administration of the Australian IP system by simplifying and streamlining laws and procedures relating to Australian intellectual property rights. Below we discuss some of the note worthy changes.
The proposed changes are numerous, with many simply aimed at aligning terminology across the Intellectual Property Acts (Copyright Act 1968, Designs Act 2003, Olympic Insignia Protection Act 1987, Patents Act 1990, Plant Breeder’s Rights Act 1994 and the Trade Marks Act 1995).
These are exposure drafts, meaning they may still change before they are put into a Bill that goes before Parliament. Once a Bill is introduced into parliament it can then still be changed further.
Designs and Patents – amendments to these Regulations will remove the ability for early payment of renewal fees. Instead payment of renewal fees will be restricted to 12 months before the relevant date. The six month ‘grace period’ for late payment of a fee will be retained. This is intended to encourage patent and design owners to review their rights each year and let them lapse if they are no longer commercially useful to them. Presently some patent and design owners pay the renewal fees several years in advance or for the whole term in one payment.
Plant Breeders Rights (PBR) – amendment to this Regulation will introduce a six month grace period for paying the renewal fee. Consistent with other IP rights, early payment will be restricted to 12 months before the relevant anniversary.
Trade Marks – the current regulation already restricted payment to 12 months before expiry, and allowed a six month grace period. Unlike the other IP rights, the current trade mark regulations require the Registrar to notify the registered owner of the upcoming renewal two months prior to the deadline if it has not received a request for renewal. This requirement will be removed. However, IP Australia will continue to issue a reminder to those that wish to receive them, suggesting an opt in service.
Unjustified threats of infringement
There is presently provision in the Patents, Trade Marks, Designs and Olympic Insignia Protection Acts for a person that receives unjustified or groundless threats of infringement proceedings to apply to court for a declaration that the threats are unjustifiable, an injunction against continuance of the threats and recovery of any damages sustained as a result of the threats.
The draft Amendment Bill introduces equivalent provisions into the Plant Breeders Rights Act, makes the wording of the provision more consistent across the various Acts and also adds provisions for additional damages for flagrantly unjustified threats.
In recent years there have been efforts to align Australian and New Zealand patent law. There was a proposal, which has now been abandoned, to have a single patent application and examination process for the two countries. There is also going to be a joint registration regime for New Zealand and Australian patent attorneys. However, these changes to the “unjustified threat” provisions are an example of where the Australian and New Zealand laws are diverging. Similar provisions are still included in the New Zealand Designs Act, and the Copyright and Trade Marks Acts (unjustified proceedings). However, recent law changes in New Zealand removed this type of provision from the Patents Act.
Timeframes for trade marks
The amendments to the regulations will have three effects on the acceptance timeframes for trade mark applications. The amendments will:
- Reduce the prescribed period for acceptance of a trade mark application or an International Registration designated in Australia (IRDA) from 15 months to nine months;
- Provide for acceptance to be deferred for six months while an applicant gathers evidence to address grounds for refusing the application or IRDA; and
- Remove the ability to get ‘easy’ extensions of the acceptance period.
Acceptance of applications
Currently the prescribed period is 15 months from the date of the first examination report. Australia has one of the longest acceptance times in the world, and is also longer than that allowed for patents and designs, which are 12 months and six months respectively. It is hoped that a reduced timeframe of nine months will streamline the system, improve certainty for third parties, and be more consistent with the effective acceptance period in other jurisdictions.
Section 36 – deferment of acceptance
Currently, an applicant can request deferment of acceptance of trade mark application for up to 6 months. This is available if an applicant is seeking to establish honest concurrent use or prior use (subsections 44(3) or 44(4)).
The amendment will expand the grounds for which applicants can request a deferment of acceptance, to include deferment for the purposes of gathering evidence that the trade mark has acquired distinctive character (under section 41) or to establish that the certification trade mark does distinguish certified goods or services from non-certified goods or services (177(1)).
Extensions to time for acceptance
Under the current legislation, applicants can easily obtain a six month extension to the acceptance timeframe without having to provide reasons (dubbed ‘easy’ extensions of time). The acceptance period can also be deferred under section 36 and extended under section 224 of the Trade Marks Act.
The amendments remove the option for applicants to obtain an ‘easy’ extension of time. Applicants who genuinely need more time will still have deferment of acceptance and extensions of time available under sections 36 and 224 (respectively) of the Trade Marks Act.
Section 224 – Extension of time
Subsections 224(2) to (8) are to be replaced with new provisions 224A to 224E. The amendments introduce new general extensions of time provisions for Trade Marks, similar to those for Designs, Patents and PBR.
However, unlike the other IP rights, the trade marks legislation also provides for ‘special circumstances’ as a ground on which to seek an extension of time.
Provision is made for IP Australia to provide guidance in a notifiable instrument to assist applicants in differentiating between special circumstances and circumstances beyond the applicant’s control.
With the removal of the Official Journal the commencement of the 2 month opposition period will now occur from acceptance and will be “promptly published”.
We will keep you updated on the progress of the Bill.
The Bill, Regulations and an accompanying Explanatory Memorandum can be found here.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.