Government responds to productivity Commission’s Final Report on Intellectual Property Arrangements

Government responds to productivity Commission’s Final Report on Intellectual Property Arrangements

Government responds to productivity Commission’s Final Report on Intellectual Property Arrangements

The Australian Government has now published its response to the Productivity Commission’s (PC’s) final report on its inquiry into Australia’s intellectual property arrangements. The response can be found here and our report on the PC’s final report can be found here.

While it is very pleasing that the Government has not accepted the PC’s recommendation to replace the current pharmaceutical patent term extension system with a Singapore-style system, and is considering repealing the requirement to file expenditure returns under section 76A, other aspects of the Government response are not so pleasing.

The more concerning aspects of the Government response for patentees are the following:

1)       The Patents Act will be amended to include an objects clause.

2)       The provisions relating to the assessment of inventive step will be amended yet again, this time to make them consistent with the EPO. Applicants will also be required to identify the “technical features” in the claims.

3)       The innovation patent system will be abolished.

4)       Further consideration will be given to introducing a reporting and monitoring regime for potentially anti-competitive conduct between pharmaceutical patent owners and generic pharmaceutical manufacturers.

IP Australia has already commenced public consultation on some proposed reforms to Australia’s intellectual property (IP) arrangements. Five consultation papers can be found here, along with information about how to make submissions in response to the proposals. The deadline for submissions is 17 November 2017.

The first four consultation papers relate to a number of the recommendations from the PC’s inquiry into Australia’s IP arrangements, and the PC’s 2013 inquiry into compulsory licensing of patents. The fifth paper relates to implementation of the division of International trade mark registrations designating Australia, and consequential proposals to align and harmonise the existing practice of dividing domestic trade mark applications.

The five consultation papers are as follows:

Paper 1: Amending inventive step requirements for Australian patents

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

Paper 3: Amending the provisions for Crown use of patents and designs

Paper 4: Amending the provisions for compulsory licensing of patents

Paper 5: Introducing divisional applications for international trade marks

As reported earlier this year at the legislative proposals put forward in IP Laws Amendment Bill 2017 were placed on hold pending finalisation of the Government’s response to the PC report on Australia’s intellectual property arrangements. Although Government has now responded to the PC Report, we expect that several of the proposed changes in the Bill will need to be redrafted to take into account some of the new reforms arising from the Report.  Accordingly it is not currently clear when the Government will move forward with the legislative proposals contained in the earlier Bill.

If you have any questions about the papers, please contact the writer.

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