The change is here – The Intellectual Property Laws Amendment Act 2006 (Cth)

The change is here – The Intellectual Property Laws Amendment Act 2006 (Cth)

In our May IP Law Update we reported on the changes that the Intellectual Property Laws Amendment Bill 2006 proposed to make to several pieces of Australia's intellectual property legislation. On 27 September, 2006, the Intellectual Property Laws Amendment Act 2006 received Royal Assent.

The Act makes significant amendments to the Patents Act 1990 and to the Trade Marks Act 1995. The Act makes other, less substantive amendments to the Designs Act 2003, the Plant Breeder’s Rights Act 1994 and the Olympic Insignia Protection Act 1987. Many of the amendments are now in force. Others will come into force on 25 October 2006 and some provisions require regulations in order to be fully implemented. There are no differences between the amendments proposed in the Bill and those enacted in the Act. The main amendments are set out below.

A. PATENTS ACT

The Act makes several amendments to the Patents Act 1990 (Cth) (“the Patents Act”).

1. AMENDMENTS TO THE PATENTS ACT NOW IN FORCE

The following amendments are now in force:

  • Prior use as a Defence to Patent Infringement (Schedule 6) – The Act amends the application of the prior use defence. Old section 119 has been repealed and replaced with a new section 119. The new section 119 is intended to clarify the application of this seldom used defence. The amendments apply in relation to patents granted as a result of applications filed on or after 28 September 2006.
  • Compulsory Licensing (Schedule 8) – The Act amends section 133 of the Patents Act to provide a further ground on which a compulsory licence can be obtained, that is, where the patentee is engaging in anti-competitive conduct which would be a contravention of Part IV of the Trade Practices Act 1974 (Cth) (“the Trade Practices Act”) in connection with the patent (section 133(2)(b)). The amendments also give the Federal Court exclusive jurisdiction to hear applications for compulsory licences.

The amendments to the compulsory licence provisions in the Patents Act were the subject of a Further Explanatory Memorandum. The Further Explanatory Memorandum is intended to clarify the relationship between the provisions of the Trade Practices Act and the Patents Act and, in particular, to clarify that:

  1. the compulsory licence provisions to be inserted in the Patents Act are intended to complement the remedies available under the Trade Practices Act and are not intended to limit the Court’s power under the Trade Practices Act; and
  2. a compulsory licence for a patent is available as a remedy under the Patents Act for any breach of Part IV of the Trade Practices Act in addition to any other remedies that are currently available under the Trade Practices Act.

 

  • Damages for Infringement (Schedule 5) – The Act amends the Patents Act to allow the award of exemplary (or punitive) damages in addition to ordinary compensatory damages (section 122(1A)). These damages are only available for infringements that occur after the amendments come into force.
  • Innovation Patents (Schedule 9) – The Act amends section 40(2)(c) of the Patents Act to introduce a requirement that the claims of an innovation patent must define the invention.

2. Amendments to the Patents Act commencing on 25 October, 2006

The following amendments will come into force on 25 October, 2006.

  • Springboarding on Pharmaceutical Patents (Schedule 7) – The Act extends the current springboarding provisions in the Patents Act to allow springboarding on any “pharmaceutical patent”, at any time, for purposes connected with obtaining regulatory approval of a pharmaceutical product in Australia or overseas (section 119A). Engaging in activity which falls within this provision will not constitute patent infringement. However, the amendments do not allow export of goods from Australia unless those goods are covered by a patent whose term has been extended.

    The amendments apply in relation to the exploitation, on or after 25 October, 2006, of inventions claimed in patents in force on or after that time.

    The Senate Economics Committee recommended that the government pass these amendments but with a qualification that the government consider initiating an interdepartmental committee to consider whether springboarding provisions should be extended to other industries, and in particular, agricultural chemicals. IP Australia has initiated an interdepartmental committee to formulate the government’s response to the report of the Advisory Council on Intellectual Property entitled “Patents and Experimental Use”. We will follow the progress of this committee.

3. Amendments to the Patents Act commencing later

These amendments will come into force on a day to be proclaimed, or, at the latest, 28 March, 2007.

  • Innovation Patents (Schedule 10) – The Act also amends section 79C(2) of the Patents Act to provide that a divisional application for an innovation patent may only be made during the period starting when examination of the first patent begins and ending when the first patent ends, ceases or is revoked, or ending at a period prescribed by the regulations. The regulations have not yet been amended.

B. Trade Marks Act

The Act also makes several amendments to the Trade Marks Act 1995 (Cth) (“the Trade Marks Act”).

1. Amendments to the Trade Marks Act now in force

The following amendments are now in force:

  • Registration requirements for Certification Trade Marks (“CTMs”) (Schedule 3) – This section seeks to clarify the requirements concerning the application process for CTMs and use of a CTM (Sections 173, 175, 177 and 181).
  • Extensions of Time (Schedule 13) – The Act clarifies that the right of review provided for under section 225(7) to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for doing an act is limited to the Registrar’s decision not to extend the time for doing the “relevant act” (Section 224(7)).
  • Setting Date by Regulation (Schedule 11) – The Act allows the “filing date” of an application for registration of a trade mark to be set by Regulations made under the Trade Marks Act. The purpose is to allow a date to be reset if, for example, there is disruption to online filing services (Section 6).

2. Amendments to the Trade Marks Act commencing later

These amendments will come into force on a day to be proclaimed, or, at the latest, 28 March, 2007.

  • Revocation of Acceptance (Schedule 1) – The Act broadens the circumstances in which the Registrar may revoke acceptance of an application (Section 38).

  • Revocation of Registration (Schedule 1) – The Act allows the Registrar to revoke registration of a trade mark for up to 12 months post registration, in circumstances in which the trade mark should not have been registered in the first place (Sections 84 and 224).

  • Registration of Certification Trade Marks (Schedule 3) – The Act amends the procedures to be followed by the Trade Marks Office and the ACCC for registering CTMs (Sections 174, 176, 178, 179).

  • Access to Documents (Schedule 4) – The Act introduces a new section allowing “prescribed documents” to be made available for public inspection (Sections 217A, 226A).

 

  • Non payment of Fees (Schedule 2) – The Act clarifies the consequences of failure to pay a fee associated with filing a document or an application for registration (Section 223).

3. Amendments which commence retrospectively

  • Cancellation of a Registration (Schedule 16) – The Act amends a formatting error of subsection 84(2) of the Trade Marks Act to clarify the words after sub paragraph 84(2)(b)(ii) relate only to paragraph 84(2)(b) and not to the whole of subsection 84(2).

C. Other amendments

The Act also amends the Designs Act 2003 (Cth), Olympic Insignia Protection Act 1987 (Cth), the Patents Act, the Trade Marks Act the Plant Breeder’s Rights Act 1994 (Cth) to permit an act to be done after the period otherwise provided for doing the act if that period ends on a day when the Designs, Patents, or Trade Marks Office or a sub-office is not open for business (Schedule 12).

Conclusion

These amendments are likely to have a significant impact on Australia’s intellectual property laws. We will monitor the effect of the amendments with much interest and keep you updated on any further developments, including notifying you of any changes to regulations to bring the remaining amendments into effect.