IP Australia responds to public consultation on draft regulations implementing the new “Raising the Bar” changes to Australian intellectual property law

25-Jan-2013

Significant changes to Australian intellectual property law are coming into force on 15 April 2013.  Public consultation has been sought by IP Australia on the draft regulations implementing these changes, and their response has this month been published on their website.  IPAustralia has acceded to some, but not all of the concerns that have been raised proposing some changes to the regulations.  These changes will be of benefit to Australia inventors and SMEs based in Australia.

The principal intentions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 include raising the quality of granted patents so that they are more closely aligned with international standards, and providing a simplified and more effective IP system.

It was proposed in the draft regulations that a compulsory preliminary search and opinion (PSO) be conducted on new Australian patent applications excluding PCT National Phase, Convention and divisional applications. An additional fee of $2200 would have been charged at the time of filing of the Australian patent application.  Concerns were raised that this would unfairly burden Australia SMEs as they were more likely to be subject to this fee if they only intended seeking patent protection in Australia.  IP Australia has therefore decided not to implement a compulsory PSO, although it will be possible to voluntarily request a PSO if desired.

IP Australia is however still intending on introducing a new search fee for applications payable when requesting examination of the application, where there are no earlier patent searches available upon which to base examination.  This fee would again be likely to affect Australian SMEs filing in Australia only, and IP Australia has decided to reduce their proposed fee by $310 to $1400 in response to the concerns that were raised.

Other provisions of the draft regulations seek to implement stricter measures to stop competitors from copying registered trade marks. The regulations specifically introduce new measures to identify importers of goods that have been seized by customs for alleged trade mark or copyright infringement.  The importers will be required to fill out a ‘claim for release’ form for the return of those goods.  Following suggestions that were made to IP Australia, the form will now require that the full name and phone number of the importer and the address for service is entered in the form.  This will provide genuine trade mark and copyright owners with details of the importer so that they can make an informed decision on whether or not to pursue legal action.

A number of other provisions seeking to streamline various procedures before IP Australia.  These provisions include;

  1. Reducing the period after issuance of a direction to request examination for the Applicant to request examination from 6 to 2 months;
  2. Reducing the period allowed following issuance of a first patent Examination Report to resolve any issues from 21 to 12 months; and
  3. Make it more difficult to get extensions of time to file evidence in patent opposition proceedings.

While concerns were raised on the severity of these changes, particularly their effect on foreign applicants, IP Australia was not prepared to allow for any changes in these provisions.

Full details on the IPAustralia response to the public submissions can be found at IP Australia's website.

by Michael Chin Quan