Developments by Area Archives

Copyright

Digital Agenda Review

The Attorney-General’s Department will review key aspects of the Government's Digital Agenda copyright reforms which came into effect in March 2001. The Copyright Amendment (Digital Agenda) Act 2000 (Cth) was designed to update the Copyright Act 1968 (Cth) for the online environment and other new communications technologies. It implemented the most comprehensive reforms to Australian copyright law in more than 30 years. Law firm Phillips Fox has been selected to conduct a major part of the review.

Issues papers were released at the beginning of August 2003. Phillips Fox held public fora in Melbourne and Sydney in August and September 2003, and an online forum in September 2003.

Submissions by interested parties were due by 30 September 2003.

Phillips Fox provided their final report to the Government in February 2004. The Government released the report in April 2004.

The report found that the Copyright Amendment (Digital Agenda) Act 2000 (Cth) was achieving its objectives, but that there was still room for improvement or change. The report made twenty recommendations in all.

The report found that the general public had little understanding of copyright law, and the rights and obligations of copyright owners and users. Many copyright owners feared that this ignorance of the law would lead to breaches of copyright. At the same time, copyright owners' own lack of knowledge about enforcement of copyright also meant that they were afraid to use digital technology.

Therefore the report recommended an education campaign to raise public awareness of copyright rights and obligations generally, and those in respect of digital works or technologies in particular, with the campaign to be developed with input from owners’ and users’ interests.

The report found that further empirical data was needed on how the reforms were operating in practice, in particular in relation to the library copying provisions and the education statutory licence provisions.

Phillips Fox conducted their research and analysis independently of the Government. During the term of the consultancy the Government negotiated a Free Trade Agreement with the United States (AUSFTA). The Government signed the AUSFTA on 18 May 2004. In some areas, the copyright provisions of the AUSFTA supersede the recommendations made in the Phillips Fox report.

Where relevant, submissions made to Phillips Fox and the Phillips Fox report have been taken into account in the development of legislation to implement Australia’s obligations under the AUSFTA. Progress on the broader review of the Digital Agenda reforms has been delayed as the implementation of the Agreement has had priority to date.

Following the implementation of the AUSFTA obligations, the Government will conclude its broader review of the Digital Agenda reforms. The broader review will include analysis of the Phillips Fox report in relation to issues that were not considered in the implementation of AUSFTA as well as other Digital Agenda reform issues that were raised during the review.

Government copyright priorities under Strengthening Australian Arts

Under the Election 2004 policy document Strengthening Australian Arts, the Coalition Government made several commitments to review and amend the Act.

The areas of copyright reform include the following:
• a review on whether an exception based on the principles of "fair use" be conducted in consultation with stakeholders;
• a decision on whether the one percent cap payable for broadcasting sound recordings should be retained;
• the introduction of communal moral rights legislation;
• collaboration with stakeholders in developing a resale royalty scheme;
• grant to film directors the rights to copyright in films they direct;
• improvement of access to appropriately formatted material for people with disabilities; and
• a review of government management of intellectual property.

The feasibility of extending the current legal deposit scheme to include audiovisual and electronic material with the National Film and Sound Archive as a deposit institution will also be examined.

Study to tackle access of print disbaled to copyrighted works

On 3 December 2004, it was announced that the Copyright Agency Limited (CAL) is to provide funding for research into access to copyrighted literary and artistic works for people who suffer a print disability. The result of the research will be the compilation of relevant guidelines for both users and "publishers and authors who want to provide digital works for the print disabled about the formats in which they could offer materials that would be beneficial for this sector of the community." CAL reports that the Australian Copyright Council (ACC) will undertake research into the Australian law relating to this area, as well as examine the approach taken by other countries on the issue. The National Information Library Service (NILS) will also play a role in the crafting of the guidelines.

For more information, click here.

Tabling of WIPO Treaties in Parliament

On 22 June 2004 the treaties and national interest analyses for Australia's accession to the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT) were tabled in Parliament.

The Copyright Amendment (Digital Agenda) Act 2000 (Cth) has already implemented the main obligations under the treaties, providing for a new right of online communication to the public and for sanctions in respect of the circumvention of technological protection of copyright materials.

Accession to the WCT and the WPPT is part of Australia's copyright obligations under the Australia-United States Free Trade Agreement.

Under the WPPT, Australia was obliged to enact new rights – both economic and moral – for performers in sound recordings and live performances.

Under the WCT, Australia was obliged to provide for an extension of the term of photographic copyright. Schedule 9 of the US Free Trade Agreement Implementation Act 2004 (Cth) contains provisions implementing these obligations.

New Protection for Creative Works for Indigenous Communities

The Attorney-General's Department is continuing to work on amendments to the Copyright Act 1968 (Cth) which will give effect to 'Indigenous communal moral rights'.

The proposed amendments will introduce such rights in relation to a work or film that draws on traditions, observances, customs or beliefs held in common by an Indigenous community. These rights could be independently exercised by the community and would mirror the nature and scope of authors' moral rights as far as possible.

The proposed amendments were incorporated into an Exposure Draft Bill that was developed late 2003 in consultation with the Department of Communications, Information Technology and the Arts and the Department of Immigration, Multicultural and Indigenous Affairs.

The proposed amendments have been listed for possible introduction in the Autumn Sittings of the Commonwealth Parliament.

The Exposure Draft was released on a limited basis to identified interests. Responses are currently being examined and, where considered necessary, changes will be incorporated into the proposed bill.

Copyright Law Review Committee (CLRC)

The CLRC was established in 1983 by the Attorney-General as a specialist advisory
board to consider and report to the Australian Government on specific copyright law
issues referred to it for consideration.

Government Ownership of Copyright Material
On 4 December 2003 the Attorney-General appointed a new Copyright Law Review Committee and asked it to inquire into the appropriateness of the law relating to government ownership of copyright material.

Under the Copyright Act 1968 (Cth) governments have copyright in various materials, including materials produced by government departments and agencies, and prerogative rights akin to copyright over certain primary legal materials like Acts of Parliament.

In many other countries, governments receive little protection.

The CLRC published an Issues Paper on 12 February 2004 examining the law relating to government ownership of copyright material. Submissions were received until 26 March 2004.

The Issues Paper looks at:
• whether the legislative scheme establishing government ownership of copyright is appropriate;
• whether, as a matter of public policy, the government should own copyright in material produced by the executive, judicial and legislative arms of government; and
• options for reform, legislative or otherwise, and the costs and benefits of those options.

The CLRC published a Discussion Paper for a consultation forum held in Sydney on 27 July 2004 to discuss key matters arising from submissions.

Key issues explored in this paper are:
• public policy considerations for government copyright,
• the scope of material in which the government owns copyright,
• the prerogative right in the nature of copyright,
• sections 176-178 and 35(6) of the Copyright Act 1968 (Cth),
• which entities should be included as part of the 'Commonwealth or State',
• exceptions to infringement, and
• management of Crown copyright.

The Committee reported to the Government by the end of November 2004.

Update: The CLRC was to report to the Attorney-General by 4 December 2004, but has been granted an extension until 4 March 2005.

Since inviting public submission in February 2004, the Committee has received an unexpected level of interest in the reference, with a total of 77 submissions received from peak copyright industry bodies, the library sector, publishers, Commonwealth and State departments and agencies, professional bodies and private individuals.
For access to the Committee’s Issues Paper, discussion paper for the public consultations and most of the submissions, click here.

Copyright and Contract
In April 2001, the CLRC was given a reference by the Attorney-General to look into
the relationship between copyright and contract law. The reference is primarily
concerned with the use of agreements that purport to modify exceptions granted under
the Copyright Act 1968 (Cth). In particular, the Committee investigated the extent to
which such agreements occur in online and offline environments and whether these agreements are, and should be, valid and enforceable.

The terms of the reference were:

• Whether the legislation should be amended in accordance with a sliding scale of exceptions;
• Whether the legislation should be amended to improve and standardise consu-
  mer protection;
• Whether legislative amendment is likely to be 'self-enforcing' and have a
  significant effect on industry practice; and
• Whether model licences or codes should be imposed or encouraged.

In June 2001 the Committee published an Issues Paper and called for written
submissions to be made by 10 August 2001 and received 36 responses. The Committee also prepared a Discussion Paper for a forum with key interests on 4 October 2001.

The Final Report was released to the public on 1 October 2002. The Committee reported that contractual agreements are being used to exclude or modify the copyright exceptions and that existing remedies are not adequate. Consequently, the Committee has concluded that this has caused a displacement of the copyright balance. The Comittee's recommendations for change seek to preserve the integrity of the exceptions which it identified as being fundamental to the copyright interest in Australia. Key recommendations include:

• that the Copyright Act be amended to provide that an agreement, or provision of an agreement, that excludes or modifies the operation of exceptions (namely, the fair dealing exceptions, library and archives exceptions, and exceptions designed to promote the proper functioning of technology) has no effect;
• that the integrity of the 'permitted purposes' in s 116A(3), (4), (7) of the Act be retained by preventing a copyright owner from making it a condition of access to his or her copyright material that users will not avail themselves of a circumvention device or service for the 'permitted purpose' of doing an act that is not an infringement of copyright under ss 47D, 47E, 47F, 48A, 49, 50, 51A, 183 and Part VB of the Act.
• that the recommendations in the Report should not alter the effect of s 9(3) of the Copyright Act insofar as it relates to confidentiality agreements.
• that the government encourage codes of conduct and model licenses for dealings with the remaining exceptions of the Copyright Act where relevant.

The Government is due to respond in 2003.

Jurisdiction and Procedures of the Copyright Tribunal (2000)
On 20 April 1999, the Attorney-General asked the Committee to inquire into and
report on the need for changes to the jurisdiction and procedures of the Copyright
Tribunal under Part VI of the Copyright Act 1968.

In June 1999, the Committee published an Issues Paper, Jurisdiction and Procedures
of the Copyright Tribunal, and invited submissions in response. The Committee
produced a Draft Report on its findings and proposed recommendations in
February 2000. A Final Report was published in December 2000.

The Final Report's key recommendations were:

• Amend the Copyright Act 1968 so that the jurisdiction of the Tribunal applies
  to collectively administered licences concerning all types of copyright
  material and copyright uses;
• Where appropriate, the Tribunal should employ the case management mechanisms of the Federal Court of Australia;
• Collecting societies should adopt alternative dispute resolution mechan-
  isms for resolution of disputes with copyright or potential copyright users as
  well as their disputes with members; and
• Amend the Act so that the Attorney-General may exercise a discretion to
  refer an application for declaration to the Tribunal is she or he thinks it appropriate in the circumstances.

• The Government implement a right of distribution as provided in the WCT
  and the WPPT and that this right be exhausted after the first sale (or other
  transfer of ownership) of the original or a copy of the copyright material with
  the authorisation of the copyright owner;
• Multimedia entities be protected in accordance with the principles set out
  in the Report's description of the 'technology-neutral' approach to categorisation
  of exclusive rights and subject-matter;
• Australian copyright legislation be structured so as to implement the following
  principles in relation to protected subject matter:
  
  • There be two categories of protected subject matter, both encompassing
    all embodiments of material within the literary and artistic domain;
  • Material will be protected at a 'higher level' if it is the result of significant intellectual effort by the person who undertakes its creation; and
  • There be no requirement that subject matter be in any particular, or
    indeed any, form of tangible embodiment for it to be protected.
• Australian copyright be structured so as to implement the following principles
  in relation to exclusive rights:
  • There be two exclusive economic rights (a right of reproduction and a
    right of dissemination to the public) and two exclusive moral rights
    (the right of attribution and the right of integrity);
  • The two economic rights apply to both categories of protected subject
    matter;
  • The economic and moral rights in material protected at the higher
    level subsist until 50 years after the death of the person who undertakes
    the material's creation; and
  • The economic rights in material protected at the lower level subsist for a period of 50 years from the first dissemination of the material to the
    public

Standing Committee on Legal and Constitutional Affairs

The current House of Representatives' Standing Committee on Legal and
Constitutional Affairs was established on 12 March 2002. Recent reports tabled
by the Committee are:

Cracking Down on Copycats: Enforcement of Copyright in Australia (2000)
The Committee tabled its report, 'Cracking Down on Copycats: Enforcement of
Copyright in Australia' on 4 December 2000. The report contained 22 recomm-
endations on issues relevant to the effective enforcement of copyright in Australia.
The key recommendations centred upon amendments to the criminal and civil sanctions against infringement such as:

• Increased penalties for persons convicted of subsequent criminal offences
• A presumption as to ownership of copyright for prosecutions for civil
  and criminal offences and court discretion to award penalty costs against
  either party for abuse of the presumption
• Authorisation for a copyright owner to seize a copy of their work offered
  for sale or hire in a place other than a regular place of business
• Withdrawal of the privilege against self-incrimination in civil proceedings
• Placing the onus of proof on the defendant in relation to the knowledge
  requirement in civil actions
• Providing a system of statutory damages for the infringement of copyright;
  and
• Developing guideline judgments in relation to copyright offences.

The Committee also recommended that the Minister for the Arts or the Attorney-
General, give the Committee a reference to inquire into the mechanisms for the
protection of indigenous cultural and intellectual property.

On 26 June 2003 the Government tabled its response to the report.

The response included amendments to existing legislation. These amendments were enacted as part of the Copyright Amendment (Parallel Importation) Act 2003 which came into force on 13 May 2003. The amendments in relation to enforcement include:
• easing the burden of proof of the existence and ownership of copyright;
• a requirement that judges consider deterrence when assessing additional damages in civil cases;
• the introduction of criminal sanctions for advertising the supply of infringing copies of any copyright protected material; and
• the grant of jurisdiction to the Federal Magistrates Service in civil copyright infringement matters.

The formation of an Intellectual Property Enforcement Consultative Group was also an outcome of the report. Led by the Australian Federal Police, this body provides a forum for consultation between Commonwealth law enforcement agencies and IP owners in relation to criminal IP enforcement issues.

The response noted that the government does not propose to adopt the Committee’s recommendation that the Committee be given a reference to inquire into the mechanisms for the protection of indigenous cultural and intellectual property. This was seen as unnecessary, in that the issue is being examined in international fora such as WIPO.

• The Advisory Report on the Copyright Amendment (Digital Agenda) Bill 1999
  (1999); and
• Don't Stop the Music! A Report of the Inquiry into Copyright, Music and Small
  Business (1998).

Human Rights and Equal Opportunity Commission (HREOC)

The Human Rights and Equal Opportunity Commission is a national independent statutory government body, established in 1986 by an Act of the federal Parliament, the Human Rights and Equal Opportunity Commission Act 1986 (Cth). The federal Attorney General is the Minister responsible in Parliament for the Commission.

Forum on Accessibility
On 29 May 2002, the Australian Human Rights and Equal Opportunity Commission (HREOC) convened a national forum to address the issues surrounding the provision of curricular material in accessible formats (audio, braille, e-text and large print) for university students with a print disability. Key copyright issues discussed at the forum included the operation of the statutory license under Part VB of the Copyright Act 1968 (Cth) for the copying and communication of copyright material by institutions assisting persons with a print disability, the library and archives exceptions, and the fair dealing exceptions. Other issues discussed included the financial implications for universities in providing material in accessible formats, resource implications for producers of material in accessible formats, and strategies for enhancing access to tertiary study materials for students who require these to be provided in alternative formats.

The Forum made the following recommendations pertaining to Copyright and Publishing:

• That HREOC establish and co-ordinate a working group with representatives from the following groups to provide education about copyright issues to students and all libraries, and, in particular, to develop practical guidelines for understanding and applying copyright:
  - Commonwealth Attorney General's Department
  - Copyright Agency Limited
  - Students
  - Educational Institutions
  - Australian VC's Committee
  - Australian Publishers Association
  - NTEU
  - Blind Citizens Australia
  
• That the group referred to in Recommendation 1) consider the following specific issues as part of its work:
  - central co-ordination;
  development of a database of material produced under Statutory License, having regard to work that is currently being done by the Copyright Agency Limited (CAL);
  - availability of electronic version at the time of publication;
  - with input from the Australian Libraries Copyright Committee, Fair dealing by students with print disabilities who use scanners and other means to gain independent access to materials;
  - co-operation with the Library of Congress and bodies in the UK with a view to developing centralised catalogues;
  - links with overseas publishers to ensure availability of electronic versions
  - barriers to the production of accessible-format materials and the accessibility of electronic materials, as a result of encryption and copy-protection schemes.

More information is available at the HREOC website.

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Designs

Extension of the Jurisdiction of the Federal Magistrates Service to Patent, Trade Mark and Designs Matters
ACIP is currently considering the extension of the jurisdiction of the Federal
Magistrates Service (FMS) to patent, trade mark and designs matters. This review
stems from a call from some sectors of industry for a quicker, more cost
effective mechanism to deal with IP disputes.

The Council has released an Issues Paper and Discussion Paper. The Council received a number of written comments and submissions regarding the review. Round-table consultations have also been held with interested parties.

ACIP recently presented its report to the Government. Federal Industry Parliamentary Secretary, the Hon Warren Entsch MP released the report on 19 February 2004.

The report recommends extending the jurisdiction of the FMS to patent, trade mark and design matters. The report notes the FMS has worked well in other jurisdictions by providing relatively quick and cheap dispute resolution mechanisms and it is expected that these benefits could also apply to IP matters.

The report also recommends changes to streamline current court processes and a more proactive approach by the courts to case manage IP matters. It encourages a greater use of alternate dispute resolution mechanisms by the courts and the early appointment of judges and magistrates with expertise in intellectual property.

Further information is available on the ACIP website.

Click here to return to current developments page.

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Domain Names

1. au Domain Administration Ltd (auDA)

auDA is an Australian not-for-profit company vested with the responsibility of operating the .au domain.

Policy Review of Restrictions on Commercial Geographic Names

The auDA board met on 9 August 2004 to consider public submissions received, announcing the outcome of the review on 1 September 2004.

The board agreed that commercial geographic names are useful and desirable for Australian businesses. It was noted that the restriction was introduced by the previous com.au and net.au administrators and had been interpreted and applied in different and inconsistent ways over the past 7 years. It was further noted that, to auDA's knowledge, geographic names are not restricted in any other comparable domain space.

The board decided, in principle, to lift the restriction on geographic names in com.au and net.au. The board noted that concerns about the possible negative impact on community geographic names could be addressed as part of the implementation plan.

The board has requested auDA staff to prepare an implementation plan, including the timing and method of releasing the commercial geographic names.

Domain name Policy Review Panel
In July 2004 the auDA Board established the Name Policy Review Panel to:
• review auDA's Domain Name Eligibility and Allocation Rules for the Open 2LDs (2002-07); and
• provide recommendations to the auDA Board about what changes (if any) should be made to that policy.

In August 2004 the Panel released an Issues Paper for public consultation which canvasses a number of issues that it has identified for consideration.

The closing date for submissions was 30 August 2004.

The Panel has released its Draft Recommendations on Domain Name Policy Rules.

The Panel invites all interested parties to comment on the draft recommendations before they are finalised for presentation to the auDA Board.

The closing date for submissions was 8 October 2004.

Release of geographic names in com.au and net.au

Under current policy there is a restriction on the use of geographic names as domain names in com.au and net.au. Following a public review in 2004, the auDA Board resolved that geographic domain names are useful and desirable for Australian businesses and that the restriction should be lifted.

auDA has determined that the fairest and most effective way of releasing the geographic names for use as domain names will be by way of individual ballots. Some geographic names are available as domain names in both com.au and net.au, while some geographic names are only available in either com.au or net.au.

Click here for more information

Registry Competition Review Panel
In July 2004 the auDA Board established the Registry Competition Review Panel
to:

• review auDA's competition model as it applies to the provision of .au second level domain (2LD) registry services; and
• provide recommendations to the auDA Board about what changes (if any) should be made to the competition model.

The Panel has released its First Consultation Report which canvasses a number of issues and options that it has identified for consideration.

The closing date for submissions was 24 September 2004

The panel expects to complete its review in October 2004

Changes to Regulation of Domain Name Resellers
In October 2003, auDA reviewed the position of domain name resellers within the .au self-regulatory regime. auDA drafted its Proposed changes to the regulation of registrar-appointed resellers with assistance from registrar and reseller representatives.

auDA sought public feedback on the proposed changes. Public submissions received are available on the auDA website.

auDA introduced the changes on 1 December 2003. In summary, the new regulatory measures are:
• Remove the reseller fees charged to registrars;
• Redraft clause 15.3 of the Registrar Agreement, removing the strict liability of registrars for their resellers, and instead giving auDA the discretion to hold a registrar responsible for its reseller on a case-by-case basis;
• Conduct website audits for selected resellers;
• Establish a reseller mail list for direct communication between auDA and resellers.

The changes are intended to increased industry compliance with auDA policies and the Code of Practice.

WHOIS Policy
auDA reviewed the WHOIS Policy (2002-06) during July/August 2003.

The new WHOIS Policy (2003-08) was published on 22 September 2003.

The policy deals with the collection, disclosure and use of WHOIS data in the open .au second level domains (2LDs). At the time of publication, the open 2LDs are asn.au, com.au, id.au, net.au and org.au.

The policy clarifies conditions imposed by auDA's Registry Licence Agreement and Registrar Agreement on the registry operator and registrars in relation to the collection and use of WHOIS data.

The purpose of the WHOIS service is to allow users to query a domain name to find out the identity and contact details of the registrant. This is a standard feature of domain name systems around the world.

• The policy aims to strike an acceptable balance between:
• the rights of registrants, under Australian law, in relation to how their personal information is handled;
• the role of auDA to promote a competitive and efficient domain name industry; and
• the interests of law enforcement agencies in accessing information about domain names for consumer protection and other public interest purposes.

The policy sets out the procedure for collection of WHOIS data and notes that:
• under the Registrar Agreement, and in accordance with Australian privacy legislation, registrars must inform registrants of the fact that some of their personal information will be disclosed on the WHOIS service;
• under the domain name licence agreement, registrants grant to the registry the right to disclose information for the purposes of maintaining the WHOIS service.

In order to maintain the integrity of the WHOIS database, registrants are required to notify their registrar of any changes to WHOIS data for their domain name(s) and the registrar must update the WHOIS database on receipt of new information from the registrant.

In the past, it was possible to use WHOIS to find out the creation and/or expiry date of a domain name. This enabled some members of the domain name industry to send unsolicited renewal notices to registrants with whom they did not have a prior business relationship, causing significant levels of customer confusion. As a result of these problems, auDA has determined that creation, renewal and expiry dates will not be disclosed on the WHOIS service. Registrants who wish to check the creation, renewal or expiry date of their own domain name can do so through their registrar or reseller.

The policy sets out prohibited uses of the WHOIS data, as follows:
• use of WHOIS data to allow, enable or otherwise support the transmission of unsolicited communications to any person, by any means;
• use of WHOIS data to support an automated electronic query process; and
• bulk access to WHOIS data (ie. where a user is able to access WHOIS data other than by sending individual queries to the database).

In order to enforce these prohibitions, auDA imposes restrictions on the number of queries that a user can send to WHOIS and reserves the right to vary the restriction at any time. There are exceptions for activities of law enforcement agencies.

auDA will closely monitor the use of the WHOIS service, and hold a public review of this policy 12 months after implementation.

More information on the policy is available on the auDA website.

Review of Registrars Transfer Policy
auDA is inviting public comment on the Transfers (Change of Registrar) Policy.
auDA is interested in receiving feedback from registrars, resellers and registrants
about their experience with domain name transfers since the policy came into force
on 1 July 2002. All comments will be posted on the auDA website within 2 working
days of receipt.
The deadline for comments was Friday 31 January 2003.

More information is available on the auDA website.

Transfers (Change of Registrar) Policy
The new domain name Transfers (Change of Registrar) Policy (2002-03) came into force on Monday 16 June 2003. The main feature of the new policy is that registrants may transfer their domain name to another registrar at any time without having to enter into a new two year licence. auDA reviewed the Transfers (Change of Registrar) Policy (2003-03) during January/February 2003 and published the new Transfers (Change of Registrar) Policy (2003-03) on 14 March 2003.

New Geographic 2LDs
In November 2002, on the recommendation of the New Names Advisory Panel, auDA announced that it would create eight new second level domains (2LDs) for Australian states and territories - act.au, nsw.au, nt.au, qld.au, sa.au, tas.au, vic.au, wa.au.

auDA is now seeking public feedback about the implementation of new second level domains (2LDs) for community use of Australian geographic domain names.

auDA has established a National Reference Group (NRG) including representatives of Commonwealth, State and local governments, the Committee for Geographical Names in Australasia, and the general community. The NRG will play a high-level policy advisory role during the implementation period, in order to ensure that the new community-based 2LDs are implemented in a way that maximises their public appeal and utility,

The NRG has now published two papers for public comment.

The closing date for submissions was Friday 10 January 2004.

All submissions are available on the auDA website.

New Dispute Resolution Policy
auDA, the Australian non-for-profit domain name administrator, has introduced a
new dispute resolution policy. The auDR commenced on 1 August 2002. The
purpose of the auDRP is to provide a cheaper, speedier alternative to litigation for
the resolution of disputes between the registrant of an .au domain name and a
party with competing rights in the domain name.

Domain name licences that were issued before 1 August 2002 are not subject to a
mandatory administrative proceeding under the auDRP until the domain name
licence is renewed, or unless the registrant voluntarily elects to be bound by the
auDRP before their domain name licence is renewed.

The auDRP is an adaptation of the Uniform Dispute Resolution Policy (UDRP) admin-
istered by ICANN (the Internet Corporation for Assigned Names and Numbers) with
respect to the global Top Level Domains (gTLDs). The auDRP differs from the UDRP
in two main respects:

• to take account of the policy rules that apply to .au domain names, that do not apply to gTLD domain names; and
• to address practical constraints that have become apparent since arbitrations
  under the UDRP began in 1999.

Complaints under the policy may be submitted to any auDA-approved dispute
resolution service provider. Each provider follows the auDRP Rules as well as its
own supplemental rules. A list of auDRP providers is currently available.

New Domain Name Policy
AuDA has approved a new domain name policy. The policy came into force on
1 July 2002. It includes expanded domain name registration criteria that allow applicants to be eligible to register a domain name based on their Australian regist-
ered trade mark (or on a trade mark application). Further, an applicant can register
a domain name that is 'closely and substantially connected' to that applicant. The
new policy also introduces a new id.au domain for Australian individuals, who will
be able to register their own names as domain names.

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Patents

1. IP Australia

IP Australia is the federal government agency that grants rights in patents, trade
marks and designs and administers the following bodies of legislation:

• Patents Act 1990
• Patents Regulations
• Trade Marks Act 1995 (except Part 13 which the Australian Customs Service administers)
• Designs Act 1906
• Designs Regulations
  

Australia Ranked 12th in International Patent Filings in 2004

According to WIPO figures released in the first week of March, a record number of international Patent Cooperation Treaty filings were lodged in 2004. Of the 120,000+ PCT applications received, 1,804 were from Australia, representing 1.5% of all PCT applications and a 7.1% increase over 2003.

Australia was the 12th biggest user of the PCT system last year, and once again the United States was the largest source of PCT applications. The biggest growth in PCT applications in 2004 came from Japan (+16.6%), the Republic of Korea (+19.3%) and China (+37.8% growth).

For further information, view the press release on the WIPO website.

Patent Information in the Australian Official Journal of Patents (2002)
IP Australia published the first issue of the supplement to the Australian Official Journal of Patents on 12 September 2002. This issue contains information on new filings from
5 July 2002, applications that have been withdrawn, innovation patents that have been granted and applications that have become open for public inspection. This new AOJP supplement will supersede the Innovation Patent Supplement to the AOJP which only contained innovation patent data.

AU Published Patent Data Searching (2002)
The data on Australian Patent Abstracts is now available on IP Australia's website as 'AU Published Patent Data Searching'. AU Published Patent Data Searching has the full data collection of Australian Patent Abstracts on CD-ROM including the 1920-74 Classification
Data CD. It allows searching on the published bibliographic data fields such as applicant name, IPC marks, inventor name, etc and displays an image of the patent abstract for review. Earlier full patent specifications that are not available in electronic form can be
viewed in IP Australia's State Offices or requested from IP Australia. This service will be updated each week from the Weekly Update APA CD.

New Statutory Fees Come Into Effect (2002)
IP Australia's statutory fees under the Patents, Trade Marks and Designs Acts came into effect on 1 September 2002. The fees aim to accommodate an electronic business environment and provide some simplification and consistency of the fee schedules.

IP Australia have clarified that the new fees will be applied to renewal and continuation
fees in the following manner:

• For a patent to be renewed, the full renewal fee for the anniversary due must be
  paid.
• For payments made after the anniversary date but within 6 months, the renewal
  fee includes an additional amount for each month or part thereof that the fee is
  paid after the anniversary.
  
• If a renewal payment is attempted after the anniversary date, but does not include the additional amount determined by the date of payment, renewal cannot be effected.
• Renewal can only be effected when the full amount due is paid.
  
• If an attempt to pay a renewal fee occurs before 1 September 2002, but was not effective because of an underpayment, the balance due to effect payment after 1 September 2002 is determined by reference to the new fee schedule.

More information about the fee changes can be found on the IP Australia website under the official notices.

3. Advisory Council on Intellectual Property (ACIP)

ACIP was established in 1994 as a non-statutory body under the Minister's authority. Membership includes two ex-officio government members and up to 11 others
whose background and experience reflect the variety of users of the IP system.
The body advises the Minister and IP Australia on matters relating to the strategic administration of IP Australia and on the policy and administration of patents,
trade marks and designs.

Public Inquiry on Patents and Experimental Use
There has been increasing concern both in Australia and overseas that patent rights may be inhibiting research and development, particularly in biotechnology. Australian public and private sectors spend a considerable amount on research and development. There has also been concern that there has been insufficient return on this investment through commercialisation of research and development in Australia and that inadequate use of the patent system by researchers may contribute to this.

In response to these concerns, ACIP is conducting a review of patents and experimental use. ACIP will examine whether some types of patents are inhibiting research and development in Australia and determine whether both Australian researchers and business would benefit from introducing an experimental use exception provision (or some other provision) into the Australian patent legislation.

In examining this question, ACIP will consider whether an experimental use exemption would help researchers more effectively use the patent system to commercialise their research and development.

ACIP released its Issues Paper in February 2004.

Submissions were due by 30 April 2004. Consultations are being held in Brisbane, Sydney and Melbourne in June 2004.

Click here for information regarding the report issued in November 2005

Consideration of Crown Use provisions for Patents and Designs
Currently, provisions of the patents and designs legislation permit the Crown to use, for its purposes, patents and designs owned by other parties, without first obtaining the authorisation of the owner. The owner must be notified and compensated - if the owner considers that the proposed compensation is inadequate, they must apply to the courts for to review the adeqaucy of the amount. These provisions are consistent with TRIPS, and although they are not currently qualified, their underlying purpose is that the Crown should not be impeded by patents or designs, (which are Crown grants) from acting in the public interest, particularly in national emergencies.

ACIP is considering whether these provisions continue to reflect their intended purpose, particularly in light of the widespread corporatisation of government organisations. Other factors being considered include the bargaining power of IP rights owners, particularly small businesses, relative to that of government.

ACIP has released a discussion paper inviting written submissions. Submissions were due by 20 February 2004. Further information can be found on the ACIP website.

Click here for information regarding the report released by ACIP in November 2005

Consideration of a Position on the Patenting of Business Systems
There have been growing concerns over the impact of business systems patents
on business, innovation and the intellectual property system. In light of the rapid
increase in such patents, Federal Industry Parliamentary Secretary, the Hon Warren Entsch MP, has requested that ACIP examine the issues and, within the constraints of international obligations, propose policy options that best meet Australia's national interest and the needs of stakeholders.

ACIP released an Issues Paper in July 2002 to seek the views of interested parties. ACIP received a number of written comments in late 2002.

ACIP recently presented its report to the Government. The report was released on 25 February 2004.

ACIP consulted with a range of industry and professional groups, and found that despite the concerns, there was little hard evidence of patents for business systems either encouraging or suppressing innovation in Australia.

Making business systems ineligible for patent protection would require fundamental changes to Australian patent law, which could have adverse impacts on the more traditionally accepted patents. Consequently, ACIP recommended that business systems remain patentable for the time being, but that the issue continue to be closely monitored.

ACIP proposed further improvements to the assessment processes used by IP Australia, the federal government agency responsible for patents. ACIP also recommended improvements be made to the information available to the public to better assist the business community in managing this new area of intellectual property.

Further information is available on the ACIP website

Consideration of the Exclusion of Plant and Animal Subject Matter from the Innovation Patent
The Innovation Patent, which became available in May 2001, provides industry with
a relatively inexpensive patent right, which is quick and easy to obtain due to a
lower inventive threshold than that required for a standard patent. Due to concerns
raised over the potential implications of innovation patents to cover innovations
relating to plant and animal subject matter, the government chose to exclude
such subject matter from the legislation.

The Parliamentary Secretary to the Minister for Industry, Tourism and Resources
asked ACIP to examine and assess the implications of the exclusion
and whether it is in the national interest.

On 27 November 2004, Federal Industry Parliamentary Secretary Warren Entsch MP announced the Government had accepted the recommendations of ACIP in their report, Should plant and animal subject matter be excluded from protection by the innovation patent?

The report examines whether Australia should provide an intermediate level of patent protection – the innovation patent – for plants and animals and the biological processes for their generation.

The report recommends no change to the current arrangements at this time.
Innovation patents were introduced in 2001 in response to demand in Australia for an inexpensive second-tier or intermediate level of patent protection to safeguard small, incremental innovations.

However, plant and animal subject matter and the biological processes for their generation were excluded from the innovation patent system due to concerns expressed by some industry sectors at the time.


Extension of the Jurisdiction of the Federal Magistrates Service to Patent, Trade Mark and Designs Matters
ACIP is currently considering the extension of the jurisdiction of the Federal
Magistrates Service (FMS) to patent, trade mark and designs matters. This review
stems from a call from some sectors of industry for a quicker, more cost
effective mechanism to deal with IP disputes.

The Council has released an Issues Paper and Discussion Paper. The Council received a number of written comments and submissions regarding the review. Round-table consultations have also been held with interested parties.

ACIP recently presented its report to the Government. Federal Industry Parliamentary Secretary, the Hon Warren Entsch MP released the report on 19 February 2004.

The report recommends extending the jurisdiction of the FMS to patent, trade mark and design matters. The report notes the FMS has worked well in other jurisdictions by providing relatively quick and cheap dispute resolution mechanisms and it is expected that these benefits could also apply to IP matters.

The report also recommends changes to streamline current court processes and a more proactive approach by the courts to case manage IP matters. It encourages a greater use of alternate dispute resolution mechanisms by the courts and the early appointment of judges and magistrates with expertise in intellectual property.

Further information is available on the ACIP website.

Australian Law Reform Commission (ALRC)

Established in 1975, the ALRC is a permanent, independent federal statutory
corporation, operating under the Australian Law Reform Commission Act 1996 (Cth).
The ALRC conducts inquiries into areas of law reform at the request of the Attorney- General of Australia and provides advice to the government. The focus of the ALRC is on federal laws and legal processes.

Intellectual Property Rights Over Genetic Materials and Genetic Related Technologies
Terms of reference for an ALRC inquiry into intellectual property issues raised by
genetic information were released by the Government on 17 December 2002.
The need for the reference emerged during the joint ALRC/Australian Health Ethics
Committee (AHEC) inquiry regarding the protection of human genetic information,
discussed below.

The ALRC inquiry will consider the impact of current patenting laws and practices
(relating to genes and genetic-related technologies) on:

· the conduct of research and its subsequent application and commercialisation;
· the Australian biotechnology sector; and
· the cost-effective provision of healthcare in Australia.

The inquiry will also consider the effect that the above laws and practices have
on the Australian biotechnology sector and the cost-effective provision of
healthcare in Australia. Pursuant to the terms of reference, the ALRC will consider
and report on any changes which may be required in order to address any
problems identified in current laws and practices.

The ALRC released an Issues Paper—Gene Patenting and Human Health (IP 27)—on 28 July 2003 as the first stage of the inquiry.

The Issues Paper considers whether government funding and purchasing power might be used to contain the cost of medical genetic testing that is subject to patents. The Issues Paper also looks at:

• Possible new defences to claims of infringement of gene patents, such as where patents are used for research, for private non-commercial purposes, or for medical treatment;
• The circumstances in which the Crown use, Commonwealth acquisition or compulsory licensing provisions of the Patents Act 1990 (Cth) may be invoked;
• Constraints imposed by Australia's obligations under international treaties, and the degree to which these constraints may affect our scope for practical reform at the domestic level;
• The potential application in this area of other intellectual property laws (besides patents), such as copyright, trade secrets and design laws; and
• The interplay in this area between patent law and competition (trade practice) laws.

The ALRC released a Discussion Paper - Gene Patenting and Human Health (DP 68) - in March 2004. The paper contains more than 40 proposals for reform.

The Discussion Paper considers ways to:
• establish an express defence of 'experimental use' in the Patents Act 1990 (Cth), to make clear that researchers are entitled to study and experiment upon a patented invention;
• provide rules for the patentability of inventions involving stem cells and stem cell technologies;
• develop policy on the circumstances in which it may be appropriate for the Australian Government to acquire a patent for the purposes of promoting human health under the 'Crown use' provisions of the Patents Act 1990 (Cth);
• develop policy on the circumstances in which the public interest would require the compulsory licensing of a patented genetic invention;
• deal with intellectual property rights in genetic research databases;
• increase the capacity of patent examiners and the courts to scrutinise applications for gene patents;
• ensure patent applications are not overly broad—which can restrict other geneticists from pursuing particular lines of research;
• ensure that publicly funded research, where commercialised, results in appropriate benefits to the community;
• encourage universities and other publicly funded research institutions to raise the awareness of researchers about patenting issues and the commercialisation of research; and
• apply competition law more fully and effectively to business practices involving patented genetic inventions, including through prices surveillance by the Australian Competition and Consumer Commission.


Submissions were due by 16 April 2004.

The ALRC's final report - Genes and Ingenuity: Gene Patenting and Human Health (ALRC 99) - was tabled in federal Parliament on 31 August 2004.

The report makes 50 recommendations for reform but it does not suggest any radical overhaul of the patents system.

Some of the main recommendations are set out in summary form below:
• The Patents Act 1990 (Cth) should not be amended to exclude genetic materials or technologies from patentability; or to provide a new medical treatment exclusion; or to expand the existing circumstances in which social and ethical considerations may be taken into account in decisions about granting patents.
• Inventions involving genetic materials and technologies should be assessed according to the same legislative criteria as other inventions. However, gene patents highlighted an issue about the way the ‘usefulness’ of an invention is assessed under Australian law and the ALRC recommended reforms to this area.
• The ‘manner of manufacture’ test in the Patents Act 1990 (Cth) is ambiguous and obscure, and should be reviewed, with a particular focus on the requirement that an invention must not be ‘generally inconvenient’.
• A number of recommendations relate to reforms to assist IP Australia in adapting its current practices to the challenges posed by inventions in new areas of technology such as those involving genetic materials and technologies.
• Research funding bodies should provide guidelines on public benefit and commercialisation of research. Funding bodies should be able, in exceptional cases, to place conditions on funding to encourage wide dissemination of research results.
• The Patents Act 1990 (Cth) should be amended to provide for an experimental use exemption. This exemption should be limited to protecting study or experimentation on the subject matter of a patented invention—that is, research with a focus on discovering more about the invention and its properties.
• Research organisations should continue to raise the awareness of researchers about intellectual property issues to ensure that potentially valuable intellectual property is not lost. Similarly, universities should ensure that students in health sciences or biotechnology are made familiar with intellectual property issues and the commercialisation of research.
• Health departments need to be more active in monitoring the impact of gene patents and licences on the healthcare system. Where particular gene patent applications, patents or patent licensing practices are considered to have an adverse impact on medical research or the cost-effective provision of healthcare, health departments should consider whether to exercise any of the existing legal options to facilitate access to the inventions.
• Education programs about the licensing of inventions that involve genetic materials and technologies should be enhanced.
• The peak biotechnology industry body, AusBiotech Ltd, should develop model licence agreements and consider whether additional industry initiatives are needed to facilitate the licensing of gene patents.
• The Trade Practices Act 1975 (Cth) should be amended to clarify the relationship between Part IV of the Act and intellectual property rights, and the Australian Competition and Consumer Commission (ACCC) should issue guidelines to provide further clarification.
• Policies should be developed about the circumstances in which it is appropriate for government to invoke Crown use for the purposes of promoting human health.
• The Patents Act 1990 (Cth) should be amended to add a competition-based test to the grounds for ordering a compulsory licence.
• The Copyright Act 1968 (Cth) should be amended to clarify the position of commercial research and to facilitate access to databases used in research.

Professional Standards Board for Patent and Trade Marks Attorneys

Review of the Regulatory Regime

The Professional Standards Board’s report on the Review of the Regulatory Regime for Patent and Trade Marks Attorneys was released by Federal Industry Parliamentary Secretary, the Hon Warren Entsch MP on 4 June 2004. The report makes recommendations for changes to the regulatory regime for patent and trade mark attorneys. The report is based on the consultation process conducted by the Professional Standards Board after the release of its Issues Paper in 2002.

The Government is inviting submissions by 30 September 2004.

Further information is available from the Professional Standards Board’s website.

Review of the Disciplinary System for Patent and Trade Mark Attorneys

A review of the disciplinary system for patent and trade mark attorneys has led to recommendations for change from the Professional Standards Board for Patent and Trade Marks Attorneys. The Professional Standards Board has released an issues paper and seeks submissions and public comments by 31 October 2002.

Prior to Government changes to the disciplinary system for patent and trade mark attorneys, the Parliamentary Secretary to the Industry Minister, Warren Entsch, issued a report on 26 August 2002 for public comment. The main recommendations of the report are:

• Differentiate between settlement of disputes between client and attorney, and for disciplining an attorney for inappropriate practice;
• Introduce a system for mediation of disputes between client and attorney to allow the client to proceed separately with protecting their intellectual property and lower the costs of dispute resolution; and
• Subject attorney's actions to scrutiny by a specialist disciplinary committee.

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Plant Breeder's Rights

1. Plant Breeder's Rights Office

The Plant Breeder's Rights (PBR) scheme in Australia is administered by the
Plant Breeder's Rights Office, under the Plant Breeder's Rights Act 1994 (Cth)

Update:As of 13 December 2004, responsibility for the Plant Breeder's Rights Scheme (PBR) has been transferred to IP Australia. The move, announced as part of the new Government’s Administrative Arrangements Order published on the 27 October 2004, made the Department of Industry, Tourism and Resources (of which IP Australia is a division) responsible for the Plant Breeder’s Rights Act 1994. As a consequence, the Plant Breeder’s Rights Office (PBRO) has been transferred to IP Australia from the Department of Agriculture, Fisheries & Forestry. The Government’s decision to transfer PBR reflects a desire to bring together registered intellectual property (IP) rights into a single organisation to provide a more strategic and coordinated approach to IP policy development in Australia.

Plant Breeder’s Rights Advisory Committee
In September 2003, the Minister for Agriculture, Fisheries and Forestry, the Hon Warren Truss MP appointed a new Plant Breeder's Rights Advisory Committee (PBRAC) to serve for a three-year term.

The PBRAC promotes communication between government and the community on intellectual property issues as they affect new plant varieties. The depth of expertise of new and re-appointed Committee members provide an invaluable source of advice to the Minister and to the Registrar of the Plant Breeder’s Rights Office regarding policy, administrative and technical issues relating to the Plant Breeder's Rights Act 1994.

Further details on appointments can be found on the Department’s website.

Final Report on Clarification of Plant Breeding Issues
A report providing greater clarification of certain difficult and sometimes controversial plant breeding issues was finalised by an expert panel in December 2002. The report was made available in March 2003. The report defines 'discovery', 'selective propagation' and 'eligible breeding' methodologies and also canvasses questions and answers to common 'difficult' situations. The principal areas covered are the source population and associated issues relating to ownership, location, homogeneity, parentage, boundaries, and selection from a variable population. The issue of essentially derived varieties and the relationship between the first and the second breeder(s) is also explored.

The Panel made the following recommendations:
• that a PBR owner's ability to exercise its rights in respect of essentially derived varieties (EDV) should be extended to non-PBR varieties and that the responsibility to determine EDV is more appropriately a matter for the courts; and
• the PBR Office should make further efforts to improve overall understanding of the Plant Breeder’s Rights Act 1994 (Cth) and of administration of the PBR scheme, given that many of the criticisms relating to breeding arise through misunderstanding of the scope of the legislation.

The Panel otherwise concluded that the provisions of the Plant Breeder’s Rights Act 1994 (Cth), and administrative approaches regarding breeding issues are soundly based. Finally, the Panel acknowledged that breeding methodologies continue to evolve and, therefore it would be inappropriate to limit eligibility for PBR to varieties developed by the application of existing methods.

Plant Breeder’s Rights Advisory Committee
In September 2003, the Minister for Agriculture, Fisheries and Forestry, the Hon Warren Truss MP appointed a new Plant Breeder's Rights Advisory Committee (PBRAC) to serve for a three-year term.

The PBRAC promotes communication between government and the community on intellectual property issues as they affect new plant varieties. The depth of expertise of new and re-appointed Committee members provide an invaluable source of advice to the Minister and to the Registrar of the Plant Breeder’s Rights Office regarding policy, administrative and technical issues relating to the Plant Breeder's Rights Act 1994.

Further details on appointments can be found on the Department’s website .

Final Report on Clarification of Plant Breeding Issues
A report providing greater clarification of certain difficult and sometimes controversial
plant breeding issues was finalised by an expert panel in December 2002. The report was made available in March 2003. The report defines 'discovery', 'selective propagation' and 'eligible breeding' methodologies and also canvasses questions and answers to common 'difficult' situations. The principal areas covered are the source population and associated issues relating to ownership, location, homogeneity, parentage, boundaries, and selection from a variable population. The issue of essentially derived varieties and the relationship between the first and the second breeder(s) is also explored.

The Panel made the following recommendations:
• that a PBR owner's ability to exercise its rights in respect of essentially derived varieties (EDV) should be extended to non-PBR varieties and that the responsibility to determine EDV is more appropriately a matter for the courts; and
• the PBR Office should make further efforts to improve overall understanding of the Plant Breeder’s Rights Act 1994 (Cth) and of administration of the PBR scheme, given that many of the criticisms relating to breeding arise through misunderstanding of the scope of the legislation.
The Panel otherwise concluded that the provisions of the Plant Breeder’s Rights Act 1994 (Cth), and administrative approaches regarding breeding issues, are soundly based. Finally, the Panel acknowledged that breeding methodologies continue to evolve and, therefore it would be inappropriate to limit eligibility for PBR to varieties developed by the application of existing methods.

New Online Database for PBR varieties
In February 2002, the Plant Breeder's Rights Office announced the launch of a
searchable database for all Australian PBR varieties, both past and present.
The database features a detailed description and image for every variety granted
full rights and basic information for other PBR varieties. Searches by genus, species,
common name, variety name and title-holder are some of its advantages. The
new system replaces the previous EXCEL and CSV lists of plant varieties, which
have now been discontinued.

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Trade Marks and Other Indications

• Reform of the business name system and an education program to
  reduce confusion between trade marks and business names;
• Whether Australia should introduce the Internet Corporation for Assigned
  Names and Numbers' Uniform Domain Name Dispute Resolution Process
  (UDRP) to address cyber-squatting;
• Registration of Plant Breeders' Rights as trade marks;
• Whether geographical indications adversely affect trade mark owners'
  rights;
• Protection of traditional expressions, indigenous people's rights and
  national icons;
• Consistency of examination of trade mark applications;
• The greater difficulties of registering non-word or logo marks;
• The consequences of recent limitations on searching by trade mark
  examiners;
• Reintroducing mandatory disclaimers as promoting use of the current system;
• The ease by which extensions of time in trade mark opposition proce-
  edings are obtained;
• The option of introducing a need to prove use on renewal of registration;
• Parallel importation of branded goods; and
• Reintroducing mandatory 'association' of substantially identical or
  deceptively similar marks.

ACIP also held public seminars in Perth, Sydney and Melbourne in April 2002 to consult with stakeholders on the issues paper. ACIP received a number of written comments regarding the review.

ACIP recently presented its report to the Government. The report was released on 25 May 2004.

The report focuses on the strengthening of trade mark rights to provide more certainty about the validity and scope of rights, with the intention that this will help reduce the need for businesses to take enforcement actions.

The report also examines other aspects of trade mark enforcement, such as the seizure of infringing goods and the interface with other rights, but does not cover the issue of enforcement in the courts. This is the subject of a separate review undertaken by ACIP into the potential extension of the jurisdiction of the Federal Magistrates Service (FMS)

The report makes twelve recommendations, including the following:

• Mandatory disclaimers should be reintroduced and the cross class search list broadened.
• IP Australia should undertake a comprehensive review of its opposition procedures.
• On the issue of control and enforcement of trade mark rights in relation to counterfeit goods, seizure provisions should be strengthened to improve the prospects for trade mark owners to protect their rights.
• To ensure that the penalties for importing counterfeit goods are acting as an appropriate deterrent, a review of the penalties for the relevant offences in the Trade Marks Act 1995 (Cth) should be undertaken.
• Section 198A of the Copyright Act 1968 (Cth), which provides for circumstances in which a trade mark will not be infringed by the importation of copyright material, should be repealed (because a provision like this belongs in the trade marks legislation, rather than in copyright legislation).

The report is also closely linked to ACIP's current review into the interface between trade marks, business names and domain names.

Extension of the Jurisdiction of the Federal Magistrates Service to Patent, Trade Mark and Designs Matters
ACIP is currently considering the extension of the jurisdiction of the Federal
Magistrates Service (FMS) to patent, trade mark and designs matters. This review
stems from a call from some sectors of industry for a quicker, more cost
effective mechanism to deal with IP disputes.

The Council has released an Issues Paper and Discussion Paper. The Council received a number of written comments and submissions regarding the review. Round-table consultations have also been held with interested parties.

ACIP recently presented its report to the Government. Federal Industry Parliamentary Secretary, the Hon Warren Entsch MP released the report on 19 February 2004.

The report recommends extending the jurisdiction of the FMS to patent, trade mark and design matters. The report notes the FMS has worked well in other jurisdictions by providing relatively quick and cheap dispute resolution mechanisms and it is expected that these benefits could also apply to IP matters.

The report also recommends changes to streamline current court processes and a more proactive approach by the courts to case manage IP matters. It encourages a greater use of alternate dispute resolution mechanisms by the courts and the early appointment of judges and magistrates with expertise in intellectual property.

Further information is available on the ACIP website.

Recommendations on National Icons Rejected
ACIP has released its proposals and recommendations on the protection of national icons. The review was conducted following requests for special trademark protection for symbols and identifiers regarded as "national icons". The ACIP report proposed the introduction of a concept of a "non-exclusive" trademark and recommended several changes to the Trade Marks Act. It also suggested that any pre-existing rights in relation to the term should remain unaffected.

The government rejected the proposals because, "the existing legislative framework provides a sufficient range of measures to protect national icons from inappropriate use." In addition, the government stated, "the current system strikes an appropriate balance between the interests of the public and those who own rights in names or expressions." The government maintained that, "the cost of having any form of additional special system for protecting icons would lead to confusion and outweigh any benefits."

To access the report, click here. To access the Government response, click here.

2. IP Australia

IP Australia is the federal government agency that grants rights in patents, trade
marks and designs and administers the following bodies of legislation:

• Patents Act 1990
• Patents Regulations
• Trade Marks Act 1995 (except Part 13 which the Australian Customs Service administers)
• Designs Act 2003
• Designs Regulations
  

IP Australia incorporates the Patent, Designs and Trade Marks Offices. It is a
division of the Department of Industry, Tourism and Resources but operates
independently, reporting directly to the Minister for Industry, Tourism and Resources.

Addition of terms for trade mark e-form filing systems

On 21 April 2006, IP Australia announced that the number of terms available within the pick-list for trade mark e-form filing systems, and for the ATMOSS Goods and Services help, has been increased by over 5,000 for services classes 35 to 45. The trade mark e-form filing systems, both for standard Trade Mark Applications and the Assisted Filing Service, allow the user to select from a pick-list of goods and/or services relating to their trade mark. The additional terms provide a wider range of terms for service marks than has been the case in the past for potential applicants. The list of terms available to select from was previously restricted to the Nice classification terms plus various official Office Determinations. Further work to provide additional terms in the pick-list for the goods classes (classes 1 to 34) will be undertaken in the near future.

For further information, click here

3. Profesonal Standards Board for Patent and Trade Mark Attorneys

Review of the Regulatory Regime
The Professional Standards Board’s report on the Review of the Regulatory Regime for Patent and Trade Marks Attorneys was released by Federal Industry Parliamentary Secretary, the Hon Warren Entsch MP on 4 June 2004.

The report makes recommendations for changes to the regulatory regime for patent and trade mark attorneys.

The report is based on the consultation process conducted by the Professional Standards Board after the release of its Issues Paper in 2002.

Submissions were due by 30 September 2004.

Further information is available from the Professional Standards Board’s website.

Review of the Disciplinary System for Patent and Trade Mark Attorneys

A review of the disciplinary system for patent and trade mark attorneys has led to recommendations for change from the Professional Standards Board for Patent and Trade Marks Attorneys. The Professional Standards Board has released an issues paper and sought submissions and public comments by 31 October 2002.

Prior to Government changes to the disciplinary system for patent and trade mark attorneys, the Parliamentary Secretary to the