Developments by Area

Copyright 

Review of new format shifting exceptions

On 22 January 2008, the Attorney-General’s Department released an issues paper on the copying of films and photographs into a different format for private use. Public submissions were invited on the operation of two new copyright exceptions that permit such ‘format shifting’: sections 47J and 110AA of the Copyright Act 1968. The exceptions were introduced by the Copyright Amendment Act 2006, which also requires a review of the operation of these provisions by 31 March 2008. Submissions were due by 29 February 2008.

To access the issues paper, click here

Guidelines released for bodies seeking prescription as a key cultural institution

On 25 January 2008 guidelines were published on the Attorney-General’s Department website to assist bodies seeking to be prescribed as ‘key cultural institutions’ under the Copyright Act 1968. The new provisions, introduced by the Copyright Amendment Act 2006, add to existing provisions which enable libraries and archives to make copies of materials in their collections for preservation and other purposes. Under sections 51B, 100BA and 112AA of the Copyright Act 1968, Australia’s key cultural institutions can now make up to three copies of items of historical or cultural significance in their collection for preservation. Libraries and archives with a statutory function to develop and maintain a collection, such as the National Library of Australia, are already considered to be key cultural institutions.

To access the guidelines, click here

Review of the extension of legal deposit

On 3 December 2007, the Attorney-General's Department released its ‘Discussion Paper on the Extension of Legal Deposit’. The current legal deposit scheme requires Australian publishers of ‘library material’ (paper-based publications) to deposit copies of such material with the National Library of Australia. The department called for comments on the feasibility of extending the scheme to include audiovisual and electronic materials. Comments were due 11 January 2008.

To access the Discussion Paper, click here

Copyright infringement notice guidelines revised

The Attorney-General's Department, in consultation with the Australian Federal Police and the Commonwealth Director of Public Prosecutions, has been developing guidelines to assist law enforcement with the administration of the Copyright Infringement Notice Scheme. Introduced by amendments to the criminal offence provisions of the Copyright Act 1968, which came into force in January 2007, the scheme creates alternatives to prosecution in relation to strict liability copyright offences. These include the issuing of an infringement notice, and forfeiture of infringing copies and devices. In response to submissions received in October 2007, it was reported in January 2008 that the draft guidelines have undergone further revision. It is anticipated that the guidelines will be finalised in the first half of 2008.

To access the draft guidelines, click here

IP enforcement budget increase

On 12 June 2007, Parliamentary Secretary to the Minister for Industry, Tourism and Resources Bob Baldwin announced that the Australian Government would fund more than $12.4 million over the next two years to enable the Australian Federal Police and the Commonwealth Director of Public Prosecutions to more effectively target trade mark and copyright crime.

For more information, click here

Australia joins WIPO Internet Treaties

Attorney-General Philip Ruddock announced that Australia marked World Intellectual Property Day (26 April 2007) by joining two international treaties aimed at protecting copyright and related rights on the Internet. The Attorney-General said the World Intellectual Property Organisation (WIPO) Copyright Treaty and the WIPO Performances and Phonograms Treaty, otherwise known as the WIPO Internet Treaties, would be acceded to in Geneva. The main feature of the treaties is the protection of copyright works, sound recordings and performances fixed in sound recordings within an online environment. The treaties were adopted at a WIPO diplomatic conference in 1996, at which Australia played an active role. Australia was one of the first countries to implement the treaties with the Digital Agenda reforms to the Copyright Act in 2000.

For more information, click here

Update: WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty come into force

The WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty came into force in Australia on 26 July 2007. Due to changes made to Australian copyright law by the Digital Agenda Amendment Act 2004 and the US Free Trade Agreement Implementation Act 2004, Australia has already fulfilled most of its obligations under the treaties. However, the operation of amendments to Part IX of the Copyright Act 1968 relating to moral rights of performers in the US Free Trade Agreement Implementation Act 2004 was reliant on the WIPO Performances and Phonograms Treaty coming into operation. The amendments give new moral rights to individual performers in relation to live performances and live performances fixed in sound recordings where the performance or recording was made after the commencement of the amendments. The moral rights include the right of attribution of performership, the right not to have performership falsely attributed, and the right of integrity of performership.

For more information, click here (see Note 2)

Senate passes Copyright Amendment Bill 2006

On 12 December 2006, the Australian Attorney General, Phillip Ruddock, announced that the Senate had passed the Copyright Amendment Bill 2006. According to Mr Ruddock, Australian consumers will be able to use copyright material in a variety of ways under the new legislation.

For details of the reforms, click here

Copyright Amendment Bill 2006 introduced to Parliament

On 19 October 2006, the Copyright Amendment Bill 2006 was introduced to Parliament. The Bill legalises ‘time shifting’, allowing people in their homes to copy a television or radio broadcast for personal use so that it may be played at a later time and ‘format shifting’, allowing owners of legitimate copies of specified copyright material to copy it (and the underlying content) in a different format for personal use – i.e. VHS to DVD, CD to MP3. In addition to these two exceptions for private copying, further new specific exceptions will be added to permit:

• fair dealings with copyright material by libraries, museums or archives;
• format-shifting of copyright material for non-commercial and teaching purposes by educational institutions;
• fair dealings with copyright material for the benefit of people with disability; and
• fair dealings with copyright material for the purpose of parody and satire

Criminal offence provisions in the Copyright Act 1968 will also be amended to create indictable, summary and strict liability offences with a range of available penalties. The Government has referred the Bill for consideration by the Senate Standing Committee on Legal and Constitutional Affairs.

For more information, click here.

Prior to the Bill’s introduction and referral to the Senate Committee, the Attorney General’s Department released five Exposure Drafts regarding various parts of the Bill. The Exposure Drafts concerned exceptions and other Digital Agenda review measures, enforcement provisions, unauthorised access to encoded broadcasts, Copyright Tribunal amendments, and Technological Protection Measures amendments and related Regulations.

To access the Exposure Drafts, click here

Attorney-General announces major copyright reforms

On 14 May 2006, the Attorney-General Phillip Ruddock announced major copyright reforms. The reforms will:

• legalise ‘time shifting’ to allow the recording of most TV and radio programs to be viewed or listened to at a later time, however the recording must be deleted after one use;
• create new offences for pay TV piracy;
• repeal the one per cent cap on copyright licence fees paid by radio broadcasters for playing sound recordings on the radio;
• legalise ‘format shifting’ of material such as music, newspaper, books – allowing people to put their CD collection onto IPods or MP3 players and dub VHS cassettes onto DVDs;
• allow non-commercial uses of copyright material by libraries, museums and archives, by educational institutions for the purposes of teaching, and by people with disabilities;
• allow the use of copyright material for parody or satire; and
• provide new enforcement measures to combat copyright privacy, enabling police to issue on the spot fines and access and recover profits made by copyright pirates.

A draft exposure Bill containing these and other reforms will be released in the near future.

For more information, click here

Copyright Tribunal approves new background music licence fees

On 3 October 2006 it was announced by APRA/AMCOS (the Australasian Performing Right Association and the Australasian Mechanical Copyright Owners Society) that the Copyright Tribunal has approved a new licence scheme for the use of background music for the retail sector. The new licence fees apply to retailers and other types of businesses who use background music and will be phased in over three years commencing 1 December 2006. The scheme will not include businesses in the hospitality and fitness industry, as APRA reached an agreement on the use of background music with these groups in 2005.

Fore more information, click here

The Artist’s Resale Rights Bill 2006 introduced into Parliament

On 27 March 2006, Labor Senator Bob McMullan introduced into Parliament a private member's bill to amend the Copyright Act 1968, The Artist’s Resale Rights Bill 2006. The Bill suggests a 4% impost for works that are resold for under $A100,000 and 0.25% for those that are resold in excess of $A1 million. Acknowledging that the Bill “will not pass because it does not have the Government’s support,” Senator McMullan believes the Bill if implemented, “would create rights which exist in almost every developed country; it would recognise and reward creativity; and it would generate a legitimate income stream for some of the poorest Australians."

To assess the Bill, click here

Review of cap on royalties paid by radio broadcasters to copyright owners

On 1 February 2005 , the Government released a discussion paper requesting submissions on whether the one per cent cap on licence fees paid by commercial radio broadcasters for playing sound recordings should be repealed. The review was foreshadowed in the Government’s election policy “Strengthening Australian Arts”.

Under the Copyright Act, a radio station that broadcasts a sound recording must generally pay a copyright royalty to the owner of the copyright in that recording. The amount payable by radio broadcasters is determined by negotiation between broadcasting industry associations and the licensing organisation representing copyright owners.

If agreement cannot be reached, the Copyright Act provides a statutory licence that permits broadcasters to continue to play recordings. But the amount payable by the broadcaster to the copyright owners is set by the independent Copyright Tribunal.

Section 152(8) of the Copyright Act currently prohibits the Copyright Tribunal from ordering a radio broadcaster to pay a licence fee that is more than one per cent of the broadcaster’s gross income.

Submissions closed on 18 March 2005.

The discussion paper on the one per cent cap is available here.

Update: On 14 May 2006, the Attorney-General Phillip Ruddock announced major copyright reforms. One of the mentioned reforms will repeal the one per cent cap on copyright licence fees paid by radio broadcasters for playing sound recordings on the radio. A draft exposure Bill containing this and other reforms will be released in the near future.

For more information, click here

Review of Australian Government Film Funding Support

The Minister for the Arts and Sport, Senator Rod Kemp, has called for submissions to the July 2006 Issues Paper for the Review of Australian Government Film Funding Support. The review, which was announced in the 2006-07 Federal Budget, will outline the government’s policy objectives for the Australian film industry, analyse the state of the industry and examine the support measures for film funding in Australia. A major focus of the review will be very low and declining level of private sector investment in the film industry and the development of possible solutions for improving the effectiveness of government direct and indirect support, including tax incentives. The closing date for submissions to the Review of Australian Government Film Funding Support was Friday 11 August 2006.

To view the Issues Paper for the Review of the Australian Government Film Funding Support, click here

Copyright Amendment (Film Directors’ Rights) Act 2005

On 19 December 2005, the substantive provisions of the Copyright Amendment (Film Directors' Rights) Act 2005 (the Act) came into force by proclamation. The Act amends the Copyright Act 1968 to give, for the first time, film directors a copyright in the films they direct. The Act provides rights to directors to share, as copyright owners, in remuneration payable by pay-TV services for the retransmission of films included in free-to-air broadcasts.  The amendments will apply to films that began production after the commencement of the amendments, but rights arising under contracts entered into before that date are preserved.

Click here for the Act.

The Copyright Amendment (Film Directors' Rights) Bill 2005 was assented to on 8 November 2005, and has come into force.

Click here for the Bill and Explanatory Memorandum.

Related: The Senate Legal and Constitutional Committee's report on Provisions of the Copyright Amendment (Film Directors' Rights) Bill 2005 decided in favour of extending copyright ownership rights in films to directors and screenwriters. The Committee came to the conclusion that while there were some concerns raised in respect of the Bill, the rejection of it was not warranted. The Committee made several recommendations, the first being that the Copyright Act 1968 should be amended to provide for screenwriters to be joint copyright owners of films, along with producers and directors.

Click here for further information.

Capital allowance treatment of film copyright to be amended

The Australian government has announced that the capital allowance treatment of film copyright, which does not currently qualify for concessional treatment under Divisions 10B and 10BA of the Income Tax Assessment Act 1936, will be amended. A media release dated 10 May 2005 from the Treasurer, Peter Costello, notes that the change will see film copyright now included in the effective life depreciation regime. According to the government, "By bringing film copyright under the effective life depreciation regime, the Commissioner of Taxation may make a determination specifying a 'safe harbour' effective life. Further, taxpayers may choose to self-assess the effective life or choose the Commissioner's safe harbour effective life determination."

Click here for more information

Copyright Amendment Regulations

On 18 May 2004, in Washington D.C., Trade Minister the Hon Mark Vaile MP and his US counterpart Trade Representative Robert Zoellick signed the Australia United States Free Trade Agreement (AUSFTA).

The final text of the agreement was released on 27 May 2004.

On 18 November 2004, Mr Vaile announced that the Australian and United States governments had exchanged diplomatic notes certifying that each had made the necessary domestic arrangements to allow the AUSFTA to be implemented on 1 January 2005. The notes and associated letters that were exchanged between Mr Vaile and Mr Zoellick, can be accessed here.

These necessary domestic arrangements included passage of the US Free Trade Agreement Implementation Act 2004 (USFTAI Act). This Act contains extensive copyright amendments including, among others:

• economic and moral rights for performers;
• extension of the term of protection by 20 years;
• implementation of a scheme for limitation of remedies available against carriage service providers;
• a wider range of criminal offence provisions;
• protection against a wider range of unauthorised reproductions; and
• wider civil remedy and criminal offence provisions relating to encoded program carrying signals.

The USFTAI Act passed Parliament on 13 August 2004 and received assent on 16
August 2004.

Most of the copyright amendments in the USFTAI Act came into force on 1 January
2005. Amendments relating to performers' moral rights will commence on the day on which the World Intellectual Property Organisation's (WIPO) Performances and
Phonograms Treaty comes into force for Australia. Under the USFTAI Act, the
Attorney-General must announce by notice in the Gazette the day on which the Treaty comes into force for Australia.

The Copyright Amendment Regulations 2005 (No 1) were signed by the Governor-General and lodged in the Federal Register of Instruments on 25 February 2005 (the day after the date on which the Instrument was lodged in that Register).

The Regulations are minor, but ensure that recent amendments to the Copyright Act to include reference to the rights of performers in Part VA are also reflected in the Copyright Regulations 1969 relating to the administration of the statutory licence under Part VA.

Click here for background information on the negotiations leading up to the Agreement.

The Bill and Explanatory Memorandum are available on the DFAT website.

Launch of Digital Rights Management Guide

The Department of Communications, IT & the Arts has launched its comprehensive online Digital Rights Management Guide. The Guide provides practical advice for those seeking an appropriate digital rights management system and also explains the complex copyright issues which arise in the delivery of digital content. The Guide provides a source of ideas, information and resources to assist creators, producers and traders with the management of their content in the digital environment. It explores various technologies ranging from a simple in-house rights register to more complex systems incorporating payment options and access, focusing on the ability of an individual business to develop a system that meets its unique requirements.

Fair Use

In May 2005, the Attorney-General's Department released an Issues Paper entitled Fair Use and Other Copyright Exceptions, an examination of fair use, fair dealing and other exceptions in the Digital Age.

The purpose of this paper is to invite comment on whether the Copyright Act should include a general exception associated with principles of ‘fair use’ or specific exceptions which would facilitate the public’s access to copyright material in the digital environment.

The closing date for submissions on this issue was 1 July 2005.

Copyright Law Review Committee (CLRC)

In May, 2005, the Attorney-General announced that the CLRC would be discontinued, citing budgetary reasons. There has not yet been an announcement as to a proposed replacement for the role played by the CLRC in providing independent expert advice on copyright policy issues being reviewed by the Government.

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.

Click here for archived CLRC references.

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.

After viewing submissions, The Minister for Justice and Customs released the Copyright Law Review Committee's report, Crown Copyright, in April 2005.  This is the final report of the Committee following its inquiry into Crown copyright.

In launching Crown Copyright, the Minister noted that this report represented "a significant contribution to the Government’s ongoing process of copyright law reform".

Click here to see the Minister’s media release.

Click here for an electronic copy of the report. 

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. In the last two years, the Committee tabled reports in relation to various IP-related inquiries.

Review of technological protection measures exceptions

On 1 March 2006, the House of Representatives Standing Committee on Legal and Constitutional Affairs released a report, ‘Review of technological protection measures exceptions’. Technological protection measures (TPMs), such as passwords, are sometimes used by copyright owners to stop unauthorised copying.  Australia must implement provisions in the Australia–United States Free Trade Agreement (AUSFTA) which make it an offence to circumvent TPMs unless exceptions apply. The Committee considered what exceptions should apply. A total of 37 recommendations are made in the report. These include the maintenance of exceptions currently permitted in the Copyright Act 1968, the requirement of a direct link between access control and copyright protection in the definition of TPM or ‘effective technological measure’, and that the Government consider ad hoc requests for exceptions to the liability scheme.

To access the report, click here

Update: Government issues response to Report on TPM exceptions

The Australian Government has issued its response to the House of Representatives Standing Committee on Legal and Constitutional Affairs Report on technological protection measures (TPMs) exceptions under the Australia-US Free Trade Agreement. The Government accepted several of the Committee’s 37 recommendations, including the maintenance of the existing exceptions and that the circumvention of region coding technological measures will not be an offence under the new TPM liability scheme.

To access the Government’s response, click here

Related: Public hearings on copyright and access protection

On 19 July 2005 the Attorney-General, The Hon Philip Ruddock MP, asked the Committee to inquire into and report on technological protection measures (TPM) exceptions. The Committee has been asked to report by the end of February 2006.Copyright owners commonly use TPMs, in the form of regional coding on DVDs and encryption of software, to protect their product against copyright infringement. TPMs can be circumvented by various means, and under the FTA, Australia is required to implement a new scheme introducing civil and criminal offences to prevent such circumvention.

The House Committee on Legal and Constitutional Affairs held several public hearings on November 15-16, 2005, on copyright and access protection. Attended by both owners and users of copyright, the hearings examined the circumvention of protection measures controlling access to copyright material under the AUSFTA.

For terms of reference and other information, click here.

Click here for archived material

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.

Click here for archived material

Designs

Designs Examiners’ Manual - updates available

The Australian Designs Office Manual of Practice and Procedure ( Designs Act 2003) is under construction. On 31 July 2007, IP Australia announced thatmaterial is presently available on formalities in Part 1, and further content has been added to Part 2 (Examination) including searching, examination and some other practices. Further information is under development and will be published when available.

For more information, click here

Review of the ‘spare parts’ provision in the Designs Act 2003  

On 23 June 2006 the federal government released a report, Review of the “Spare Parts” Provision in the Designs Act 2003. The spare parts provision in section 72 of the Act was introduced to provide a complete defence against infringement where spare parts are used for the purpose of repair of a complex product, so as to restore its overall appearance in whole or part. The report, completed by IP Australia in December 2005 in consultation with industry and other government agencies, considers the impact of the spare parts provision since the Act came into effect on 17 June 2004. The report recommends that no changes be made at this time to the provision as it has yet to have a significant effect on industry and consumers and is yet to be tested before the courts in Australia. The report also recommends that IP Australia continue to monitor Australian and overseas developments regarding the issue and, in consultation with industry and stakeholders, advise appropriate action at a time when there is more information on the operation and impact of the spare parts provision.

To view the report, click here

Emerging issues in Designs Act 2003

Since the Designs Act 2003 came into effect in June 2004, three issues relating to the current operation and possible future development of the Act and its processes have been raised by stakeholders. These issues relate to:

• the harmonisation of Australian design registration with international practices;
• a grace period prior to application for design registration to permit the
• promotion, testing and sale of a design for a specified period; and
• the current structure of design fees.

In early November, 2005, IP Australia sought a wide range of views, to allow preliminary consideration of these matters for possible future policy development of the designs registration process.

Click here to view the discussion paper relating to this topic.

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.

Review of Crown use provisions for patents and designs
In November 2005, the Advisory Council on Intellectual Property (ACIP) released a report on Crown use provisions for patents and designs. Currently, when such provisions are invoked, the IP rights holder must be notified and compensated, however the Crown, or any organisation or person authorised by the Crown, has statutory immunity from actions for patent or design infringement. The report examines whether the Crown use provisions continue to reflect the needs of government, business and the Australian public. Owing to the increasing commercialisation of many government services, and with court rulings giving a wide interpretation to the range of entities that can access the provisions, ACIP advises that a more transparent and accountable process for utilising Crown use provisions be introduced.

For the report click here

For archived material, click here

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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.

New .au registrant transfers policy takes effect

The new Transfers (Change of Registrant) Policy implemented by .au Domain Administration Ltd (auDA) took effect on 1 June 2008 . In December 2007, the auDA board approved a recommendation from the 2007 Names Policy Panel that the registrant transfers policy be relaxed. Under the new Policy, registrants can now transfer their domain name after a period of 6 months. Previously, transfers were only allowed in certain circumstances, such as where the registrant and other party were related corporate entities or where transfer had been ordered by a competent authority.

To access the Policy, click here

auDA approves implementation plan for new .au registrant transfers policy

On 13 December 2007, the .au Domain Administration Ltd (auDA) board accepted the final report of the 2007 Names Policy Panel, which recommended a number of changes to the .au policy framework. One recommendation was that the Transfers (Change of Registrant) Policy be relaxed to allow a registrant to transfer their domain name licence to another eligible entity. On 26 February 2008, the auDA Board approved an implementation plan for the new transfers policy, which will allow registrants to transfer their domain name after a period of 6 months. The implementation timetable has not yet been finalised but auDA anticipates that the new policy will be introduced in mid-2008.

For more information, click here

To access the Names Policy Panel report, click here

auDA reviews community geographic domain names policy

auDA is conducting a 12 month review of the ‘Policy Rules and Guidelines for Community Geographic Domain Names (CGDNs) (2006-04)’. CGDNs are domain names registered within the eight Australian state and territory second-level domains: act.au, qld.au, nsw.au, nt.au, sa.au, tas.au, vic.au, wa.au. The purpose is to preserve Australian geographic names for use by the relevant local community. CGDNs may only be registered as third-level domain names (eg. carlton.vic.au) and their use is restricted to community websites that reflect community interests such as local business, tourism, historical information, culture, sporting groups, local events and news. The closing date for submissions was 28 September 2007.

For more information, click here

auDA reviews .au Dispute Resolution Policy

The purpose of the .au Dispute Resolution Policy (auDRP) is to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name. The auDRP commenced on 1 August 2002. After 5 years of operation, auDA is reviewing the auDRP to ensure that it remains an effective and appropriate dispute resolution mechanism. In August 2007, auDA released an Issues Paper which summarises auDRP operations to date and invites comments . The closing date for submissions was 21 September 2007.

For more information, click here

auDA’s 2007 Names Policy Panel releases Issues Paper for public comment

The 2007 Names Policy Panel of the .au Domain Administration Ltd (auDA) is currently reviewing the policy framework for .au domain names, including:

• whether .au should be opened up to direct registrations (eg. domainname.au);
• whether the policy rules for domain names should be changed; and
• whether registrants should be allowed to sell their .au domain names. 

On 18 May 2007,the Panel released an Issues Paper that sets out the current situation and invited comment on suggestions and options for change. The closing date for submissions was 15 June 2007.

For more information, click here

Update: auDA Panel releases draft recommendations on .au domain names for public consultation

On 6 September 2007, the Panel released its draft recommendations for public consultation. The closing date for submissions was 19 October 2007. The Panel is due to provide its final recommendations to the auDA Board in November 2007.

For more information, click here

auDA conducts online policy survey

As part of the review process on changes to .au policy, auDA announced on 29 March 2007 that it has commissioned Nexus Research to conduct an online survey of .au registrants and Internet users.

For more information, click here

auDA extends domain name expiry period and calls for nominations for its Names Policy Panel

On 16 November 2006, the Australian Domain Name Administrator (auDA) announced an extension of the domain name expiry period from 14 to 30 days. According to auDA, the extension is ‘designed to give Australian domain name registrants greater protection’. In related news, auDA is inviting people with an interest in Australian (.au) domain name policy to nominate for the 2007 Names Policy Panel. The purpose of the Panel is to:

• review the policy framework underlying the allocation and use of domain names in the .au domain space; and
• provide recommendations to the auDA Board about what changes (if any) should be made to the policy framework.

The Panel is expected to commence work in March 2007. The closing date for nominations was 26 January 2007.

For more information on both of these items, click here

auDA reviews its domain expiry, renewal and deletion policy

The Australian Domain Name Administrator (auDA) is currently reviewing its domain expiry, renewal and deletion policy. auDA invites comment and feedback on all aspects of the policy, including:

• whether the length of the expired period (currently 14 days) is adequate;
• whether the 7 day random drop process is effective;
• whether there should be a domain redemption period (as for generic top-level domains); and
• whether the grace period (currently 3 days) is necessary.

The deadline for submissions was Friday 11 August 2006.

For more information, click here

auDA releases issue paper on domain monetisation

On 23 March 2006, .au Domain Administration Ltd (auDA) released an issues paper on the issue of domain monetisation that asked for public comment. Domain monetisation is the practice of registering large numbers of domain names for the primary purpose of capturing as much web traffic as possible to maximise advertising revenue. The question asked by the issues paper is whether it should be acceptable under the ‘close and substantial connection’ rule to register domain names for this primary purpose. Public comment on the issues paper was due to auDA by 21 April 2006.

For further information, click here

Domain name registrations under the ‘close and substantial connection’ rule

On 13 October 2005, auDA released a statement regarding the ‘close and substantial connection rule’. In the past, auDA has held that it is acceptable under the rule to register domain names for the purpose of providing internet directory services or information portals. According to auDA, some registrants have recently been using this interpretation of the rule to register large numbers of domain names apparently for the primary purpose of capturing web traffic and/or selling click-through advertising. Until auDA issues a policy clarification of the ‘close and substantial connection’ rule, registrants who engage in this practice should be aware that auDA reserves the right to delete the domain names for breach of policy.

Click here for more information

Policy Review of Restrictions on Commercial Geographic Names

In July 2004 auDA conducted a review of the restriction on geographic names in com.au and net.au (commercial geographic names).

Click here for archived material regarding the review

Update: auDA determined that the fairest and most effective way of releasing the geographic names for use as com.au and net.au domain names was by way of individual ballots. Approximately 20,500 geographic names were included in the ballot process. All names on the Australia Post postcode database as of 19 May 2005 were included in the ballot process, with the following exceptions: airport names; hospital names; university names; defence force names; government names; postal names or names with Australia Post designators (eg. BC, MC, PO); names that have already been registered as com.au or net.au domain names. Geographic names that were not applied for in the ballot process were released into the general pool on 20 November 2005. Geographic names will be available for registration on a first come, first served basis under normal com.au and net.au policy rules through any auDA Acreddited Registrar.

For information about the ballot process, click here

Further update: auDA releases remaining geographic names in com.au and net.au

In 2005, the .au Domain Administration Ltd (auDA) held a ballot for the allocation of geographic names in com.au and net.au. Under auDA policy a ‘geographic name’ is defined as any location with an Australian postcode, as listed on the Australia Post postcode database. This includes suburb and town names, plus a number of other names such as airports and universities. A number of geographic names were not allocated in the ballot and remained on auDA’s Reserved List. These names were released on 21 October 2007 on a first come, first served basis, subject to normal policy rules.

For more information, click here

2. 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.

Review of the relationship between trade marks and business names, company names and domain names

In October 2005, ACIP and IP Australia released commissioned market research as part of ACIP’s report on the relationship between trade marks and business names, company names and domain names. The research findings conclude that, overall, there appears to be a significant lack of awareness in the business community with respect to the rights and protections associated with these names. A great majority of respondents (82%) incorrectly believe that registering a business name gives one the ‘right’ to trade under that name. One half (50%) of respondents incorrectly contend that it is not possible for the same name to be registered to different owners in different states and territories. While many respondents (87%) believe it is important to conduct a trade mark search when applying for a business name, nearly the same amount (83.8%) have not registered their business name as a trade mark. According to ACIP and IP Australia, ignorance and error may create a false sense of security for many businesses.

The commissioned market research can be found here

3. Department of Communications, IT & Arts (DCITA)

The Department of Communications, IT & Arts provides strategic advice
and professional support to the Australian Government on a wide range of significant
and rapidly changing policy areas including:

• Arts and culture
• Broadcasting and online regulation
• Information and communication technology
• IP
• Post
• Sport
• Telecommunications

Review of the .au internet domain by DCITA

The Department for Communications, Information Technology and the Arts (DCITA) has released a Discussion Paper as part of a review of the .au internet domain. Public comment is sought on various issues including the administrative structure of the .au internet domain, naming structures, policy development, competitiveness and cost effectiveness, international participation and emerging technical issues. Submissions were due by 28 November 2006.

For more information, click here

Patents

Amendments to Regulations for patent and trade marks attorneys

According to the Professional Standards Board for Patent and Trade Marks Attorneys, amendments to the Patents Regulations 1991 and the Trade Marks Regulations 1995 are expected to commence on 1 July 2008 . The new Regulations will alter the requirements for registration as patent and trade marks attorneys, and change the disciplinary regime under which attorneys practise. These include changes to the employment skills required for registration as a patent attorney. There will also be a new requirement for continued professional education. Both patent and trade marks attorneys will need to have acquired a prescribed number of hours of continuing professional education when they apply for renewal of registration for the 2009/2010 financial year.

For more information, click here

Amendments to be made to Patents Act 1990 in response to ACIP Report ‘Patents and Experimental Use’

On 6 August 2007, the Government announced amendments will be made to the Patents Act 1990 in response to the Advisory Council on Intellectual Property (ACIP) Report ‘Patents and Experimental Use’ published October 2005. The Government has accepted in principle ACIP’s recommendation that Australian patent law be changed to allow for a European-type provision which exempts from infringement “acts done for experimental purposes relating to the subject matter of the invention”. Such acts include: “determining how the invention works; determining the scope of the invention; determining the validity of the claims; seeking an improvement to the invention”. Also accepted was ACIP’s recommendation that the Government “consider reviewing the impact on Australian industry of the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval”. This practice is often referred to as ‘springboarding’. At present, Australia has a limited springboarding provision for pharmaceuticals.

To view the Government’s response to the ACIP Report, click here

Changes to PCT Regulations

Amendments to the Regulations under the Patent Cooperation Treaty (PCT) came into force on 1 April 2007 . The more significant amendments address the following situations:

• where a PCT application is filed with missing elements or parts;
• the restoration of priority where an international application is filed up to two months after the end of the twelve month priority period;
• the rectification of obvious mistakes;
• the addition of Korean patent documents to the minimum documentation to be searched; and
• a change regarding the size of text in international applications.

For more information, click here

Intellectual Property Laws Amendment Bill 2006

On 30 March 2006, the Intellectual Property Laws Amendment Bill was introduced into the House of Representatives. The Bill amends the Patents Act 1990 to clarify prior users’ rights, add a new provision to the existing compulsory licensing provisions, and allow for exemplary damages to be awarded by a court in patent infringement actions. The Bill also amends the Patents Act to implement wider springboarding arrangements that are intended to encourage companies to develop generic pharmaceuticals in Australia. The Bill amends the Trade Marks Act 1995 to simplify the processing of requests for information on trade mark files, and allow the Registrar of Trade Marks to revoke the registration of trade marks in certain circumstances. The Bill also makes a number of minor amendments to several pieces of intellectual property legislation, including clarifying the effects of the Patents, Trade Marks, Designs and Plant Breeder’s Rights Offices not being open for business. Other amendments contained in the Bill are intended to facilitate administration of the Plant Breeder’s Rights Act within IP Australia.

To access the Bill, Explanatory Memoranda, as well as other relevant Parliamentary information relating to the Bill, click here

Update: Changes to the Patents Act 1990 under the Intellectual Property Laws Amendment Bill 2006

After an inquiry by the Senate Economics Legislation Committee, the Intellectual Property Laws Amendment Bill 2006, which amends several intellectual property Acts, received Royal Assent on 27 September 2006. Changes to the Patents Act 1990 contained in the Bill include:

• exemplary damages may be awarded by a court in patent infringement actions;
• amendment is made to the prior user defence;
• a compulsory licence is available as a remedy if a person has contravened the anti-competitive conduct provisions of the Trade Practices Act 1974;
• amendment is made to clarify when a divisional application from a granted innovation patent may made; and
• wider springboarding provisions than those currently available are implemented by allowing springboarding on any pharmaceutical patent at any time. ‘Springboarding’ refers to using the subject matter of a patent to collect the data required to obtain regulatory approval of a generic version of the product to which the patent relates, during the life of the patent.

To access IP Australia’s Official Notice regarding passage of the Bill, click here

Patenting and commercialisation activities of Australian Universities

The Department of Industry, Tourism and Resources recently conducted a study dated April 2005 of patenting activities by Australian universities from 1995 to 2002 to identify factors that impede commercialisation and to gain a better understanding of the commercialisation processes employed by universities in Australia. The study was based on university surveys and face-to-face interviews with university commercialisation officials. The survey group accounts for 99% of the patents granted to Australian universities. The study examined whether there was a significant volume of unused patents held by universities in Australia. In brief, the study found that the Go8 universities (Australia's eight leading universities) accounted for 89% of the total number of patents granted to all Australian universities and 90% of commercialisation activity. The study also found that 70% of patents were commercialised. The study did not quantify the extent to which there is significant, unrealised potential in university R&D that is not being patented, much less commercialised.

Click here to access the study.

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.

Online patent database launched

On 28 April 2008 , IP Australia launched a new online search system for Australian patents titled ‘AusPat'. The database allows inventors, industry and researchers to access patent applications lodged and granted in Australia since 1979. Previously, those researching Australian patent literature had to work across several unconnected databases. AusPat is to be administered by IP Australia, and is now the Australian Patent Office's official source of online data.

To access the database, click here

Joint initiative between IP Australia and the US Patent and Trademark Office (USPTO) launched

On 14 April 2008 , IP Australia and the USPTO launched a trial cooperation initiative called the ‘ Patent Prosecution Highway ' (PPH). The program seeks to increase the quality and efficiency of examination of patent applications conducted under both the US and Australian patent systems. Under the PPH, a patent applicant receiving a report from either the USPTO or IP Australia, with an application containing at least one patentable claim, may request that the other office accelerate the examination of the corresponding application. The trial program is set for a period of one year, with a possible extension of another year, and will allow IP Australia and the USPTO to determine the interest of patent applicants in continuing the program.

For more information, click here

Consultation Paper released regarding exchange of patent documents with WIPO and IP offices

On 19 September 2007, IP Australia released a Consultation Paper titled ‘Exchanging Information on Patent Applications’. The purpose of the Consultation Paper is to inform stakeholders of the amendments IP Australia is proposing to introduce to the Patents Regulations 1991 to:

• extend the circumstances under which the Commissioner of Patents may make priority and other documents available to the World Intellectual Property Organization (WIPO) and other IP offices; and
• further reduce the circumstances where applicants are required to routinely file documents with IP Australia when the documents are not immediately required by IP Australia or, if required, are available from another IP office.

Submissions regarding the Consultation Paper were due by 17 October 2007.

To access the Consultation Paper, click here

Public consultation: patent, trade marks & WIPO treaties

On 22 May 2007, IP Australia announced it was seeking comments on whether Australia should ratify the Singapore Treaty on the Law of Trademarks (Singapore Treaty), accede to the Patent Law Treaty (PLT) and formally accept amendments designed to streamline the administrative provisions of several other World Intellectual Property Organization (WIPO) treaties. The Singapore Treaty and the PLT harmonise many formality and procedural requirements relating to the administration of patents and trade marks. As a result of a process of constitutional reform, the WIPO General Assemblies in 2003 agreed to amend the administrative provisions of a number of other treaties, including seven to which Australia is a party. The amendments introduce no substantive changes to Australia’s current obligations under these treaties. The amendments include the abolition of the WIPO Conference and a change in the frequency of the ordinary sessions of the WIPO General Assembly and the other Assemblies of the Unions administered by WIPO from every two years to once a year. Comments were due to IP Australia by 30 June 2007.

For more information, click here

Consultation Paper released on the patent search result disclosure regime

On 16 May 2007, IP Australia released a Consultation Paper proposing amendments to the search result disclosure regime set out in regulations made under subsection 45(3) and section 101D of the Patents Act 1990. Developments in the availability of foreign patent office search and examination results over the Internet have lead IP Australia to consider whether further simplifications to the search result disclosure regime are now possible. The Consultation Paper sought views on whether it is appropriate to remove the obligation for applicants and patentees to inform the patent office of the results of documentary searches. Comments were due by 13 June 2007.

To access the Consultation Paper, click here

Update: Patents Amendment Regulations 2007 (No. 1) enter into force

On 16 May 2007, IP Australia published a Consultation Paper seeking views on proposed changes to the Patents Regulations 1991 under subsection 45(3) and section 101D of the Patents Act 1990. As a result of the generally favourable feedback received, the Patents Regulations 1991 have been amended to remove the requirement to inform the Commissioner of Patents of the results of documentary searches by, or on behalf of, foreign patent offices. The amending legislation, the Patents Amendment Regulations 2007 (No. 1) entered into force on 22 October 2007. Also amended is the time for lodging notices to the Commissioner of matters affecting the validity of patents under section 27(1) of the Patents Act 1990. Notices may be filed up to three months from the date of advertisement of acceptance, rather than up to the date of acceptance, as was previously the case.

To access the Official Notice by IP Australia, click here

To access the Position Paper by IP Australia, ‘Overview of responses to the public consultation paper Removal of the obligation to lodge search results under subsection 45(3) and section 101D of the Patents Act 1990’, click here

United States and Australia to extend cooperation on patent search and examination services

The U.S. Patent and Trademark Office (USPTO) and IP Australia recently agreed to extend a project under which IP Australia provides search and examination services on international patent applications filed with the USPTO under provisions of the Patent Cooperation Treaty (PCT). This agreement is a continuation of the project launched between the two offices in 2005. The extension commenced on 1 March 2007 and will run for 12 months. In this phase of the project, IP Australia will process up to 1,200 PCT applications over the course of the year, covering a range of technologies. The USPTO will continue to review IP Australia’s work to ensure that it meets USPTO standards. Cooperation with IP Australia will allow the USPTO to dedicate more resources to examining the over 800,000 U.S. national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.

For more information, click here

IP Australia Patent Search Strategy Project

On 15 January 2007, IP Australia announced that it has initiated a new program that will provide better access to patent data for inventors, researchers and IP professionals in Australia and overseas. Currently, patent data in Australia is held in a variety of different systems. The Patent Search Strategy Project will deliver a new search facility that will ultimately provide electronic access to all Australian patent data. For those interested, IP Australia is establishing a customer reference group that is specifically tasked with guiding development of the new search system.

For more information, click here

Consultation Paper on ACIP Report ‘Patents and Experimental Use’

On 4 September 2006, IP Australia announced that an Interdepartmental Committee (IDC) has been established to draft a response to the Advisory Council on Intellectual Property (ACIP) Report ‘Patents and Experimental Use’ for consideration by the Government. As the recommendations in the ACIP Report differ slightly to the options proposed in the ACIP ‘Patents and Experimental Use’ Options Paper (published December 2004), the IDC has developed a Consultation Paper which provides a brief overview of the ACIP Report and its recommendations. Written comments regarding the Consultation Paper were due by 29 September 2006.

For more information and to assess the IDC Consultation Paper and the ACIP Report, click here

Update: Overview of responses to the Consultation Paper on ACIP Report 'Patents and Experimental Use'

On 8 November 2006, IP Australia released a paper which provides an overview of the submissions received in response to the questions raised in the Consultation Paper on the Advisory Council of Intellectual Property (ACIP) Report, ‘Patents and Experimental Use’. The Consultation Paper invited interested parties to comment on the different experimental use exemption provisions recommended by ACIP and the Australian Law Reform Commission (ALRC), and whether the interested party’s industry had been impacted by the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval.

For more information, click here

Consultation Papers on changes to Patent and Trade Marks Attorney regimes

In October 2005, the Government issued its responses to the ‘Review of the Regulatory Regime for Patent and Trade Marks Attorneys’ and the ‘Review of the Discipline Regime for Patent and Trade Marks Attorneys’ produced by the Professional Standards Board for Patent and Trade Marks Attorneys. IP Australia has the responsibility for implementing the Government responses and on 18 September 2006, produced two Consultation Papers regarding the regimes. Written comments regarding the Consultation Papers were due by 9 October 2006.

For more information and to access the Consultation Papers, click here

Update: Position Papers on changes to patent and trade mark attorney regimes

On 23 April 2007, IP Australia issued two Position Papers regarding the Discipline Regime for Patent and Trade Mark Attorneys and the Regulatory Regime for Patent and Trade Mark Attorneys. In October 2005 the Government issued its responses to two reviews of the Regimes produced by the Professional Standards Board for Patent and Trade Marks Attorneys. In September 2006 IP Australia sought comments on how it proposed to implement the Government’s responses. Following consideration of the comments received, IP Australia has decided that changes to the patents and trade marks regulations are needed and it will advise stakeholders when these changes occur. How IP Australia will implement the Government responses are set out in the two Position Papers.

For more information, click here

Review of innovation patent system

On 15 August 2006, the Australian Government released a Report ‘Review of the Innovation Patent’. The Report concludes that the innovation patent system meets its objectives and that changes are not presently warranted. The Report finds that the innovation patent is predominately being used by Australian individuals and small-to-medium enterprises (SMEs) for less-knowledge intensive innovations. However, preliminary evidence also suggests that a significant proportion of innovation patents are being used to obtain a form of quick protection for higher-level inventions while a standard patent is being pursued. Therefore, one of the Report’s recommendations is that IP Australia routinely assess the proportion of innovation patent applications that appear to be used for ‘tactical reasons’ regarding higher-level inventions. Owing to the inadequate knowledge of the system by both applicants and other parties, IP Australia will be conducting awareness-raising programs in the future.

For more information and to access the Report, click here

IP Australia's position paper on the search results disclosure regime provided under subsection 45(3) of the Patents Act 1990

On 19 April 2006, IP Australia released a position paper on the search results disclosure regime provided under subsection 45(3) of the Patents Act 1990. Following reports from the Institute of Patent and Trade Mark Attorneys (IPTA) and the International Federation of Intellectual Property Attorneys (FICPI) on the difficulties practitioners were having with the regime, discussions were held in July and October 2005 regarding possible amendments to the Patents Regulations 1991 to address these concerns. Subsequently, IP Australia released a discussion paper in November 2005 to stakeholders requesting submissions. On consideration of the 16 submissions received, IP Australia has produced the position paper. IP Australia will commence seeking the necessary Regulations changes shortly, and has stated that these changes will not take effect before July 2006.

To access the position paper, click here

Pilot project on international search and examination services

On October 26, 2005, the U.S. Patent and Trademark Office (USPTO) and IP Australia initiated a pilot project to test the feasibility of IP Australia performing search and examination services for the USPTO on international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).

Click here for more information.

Review of the innovation patent issues paper

The innovation patent was introduced in 2001 as part of the Australian Government’s Backing Australia’s Ability initiative. The main objective of the innovation patent system was to encourage innovation, particularly in Australian Small to Medium Enterprises, by providing industrial property rights for lower level inventions. The Government intended to review the innovation patent system within five years of its introduction. IP Australia has prepared an issues paper for public consultation as the first step of the review process.

Comments and submissions on the paper, or on the innovation patent system generally, were due to IP Australia by 16 December 2005.

Click here for more information.

Review of the patent grace period

The 12 month grace period for patents was introduced on 1 April 2002 as part of the Backing Australia’s Ability initiative. The grace period protects patents from invalidation by publication of the invention made by, or with the consent of, the patent applicant, or owner during the 12 month period prior to the filing date of the application. Grace period protection only applies in Australia.

At the time of introduction, the Government committed to review the grace period two years later. IP Australia released a discussion paper and nine submissions were received in response. A review was issued in August 2005.

Australia to Chair New Working Group on Substantive Patent Law Harmonisation

An Exploratory Meeting of Interested Parties Concerning the Future of Substantive Patent Law Harmonisation was held in Washington on 3 & 4 February 2005. The meeting was attended by representatives of 22 countries including Australia as well as representatives from the European Commission and the European Patent Office.

During the course of the meeting, Australia agreed to chair the meeting to progress work on some key technical elements of substantive patent law harmonisation (prior art, grace period, novelty and inventive step). The first meetings of the various sub-groups were expected to be held in April and May 2005.

Click here for more information.

Click here for archived material

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.

ACIP to conduct review of patentable subject matter

On 2 June 2008 , ACIP announced that it will be conducting a review of patentable subject matter. The review will investigate the ‘appropriateness and adequacy' of the manner of manufacture test, and the historical requirement that an invention must not be ‘generally inconvenient'. The Council is seeking expressions of interest from individuals and organisations that would like to take part in the review. An Issues Paper is expected to be circulated in July, with consultations in late 2008 and a request for written submissions by September.

For more information, click here

Amendments to be made to Patents Act 1990 in response to ACIP Report ‘Patents and Experimental Use’

On 6 August 2007, the Government announced amendments will be made to the Patents Act 1990 in response to the Advisory Council on Intellectual Property (ACIP) Report ‘Patents and Experimental Use’ published October 2005. The Government has accepted in principle ACIP’s recommendation that Australian patent law be changed to allow for a European-type provision which exempts from infringement “acts done for experimental purposes relating to the subject matter of the invention”. Such acts include: “determining how the invention works; determining the scope of the invention; determining the validity of the claims; seeking an improvement to the invention”. Also accepted was ACIP’s recommendation that the Government “consider reviewing the impact on Australian industry of the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval”. This practice is often referred to as ‘springboarding’. At present, Australia has a limited springboarding provision for pharmaceuticals.

To view the Government’s response to the ACIP Report, click here

Extension of time to make submissions for ACIP review of post-grant patent enforcement strategies

ACIP advises that the submissions date for its review of post-grant patent enforcement strategies was extended to 15 May 2007. The review is in response to the request by Federal Industry Parliamentary Secretary, Bob Baldwin, that ACIP inquire into, and report, on issues relating to post-grant patent enforcement strategies. The purpose of the review is to benefit the Australian economy by assisting patentees to effectively enforce their patent rights. The review will focus on strategies that may assist individuals and small to medium enterprises enforce their patents in a cost effective way.

For more information, click here

Review of Crown use provisions for patents and designs

The Advisory Council on Intellectual Property (ACIP) released a report on Crown use provisions for patents and designs dated November 2005. Currently, when such provisions are invoked, the IP rights holder must be notified and compensated, however the Crown, or any organisation or person authorised by the Crown, has statutory immunity from actions for patent or design infringement. The report examines whether the Crown use provisions continue to reflect the needs of government, business and the Australian public. Owing to the increasing commercialisation of many government services, and with court rulings giving a wide interpretation to the range of entities that can access the provisions, ACIP advises that a more transparent and accountable process for utilising Crown use provisions be introduced.

Click here for the report

Click here for archived material

Update: Government response on ACIP report ‘Review of Crown Use Provisions for Patents and Designs’

The report ‘ Review of Crown Use Provisions for Patents and Designs’ was released by the Advisory Council on Intellectual Property (ACIP) on 7 December 2005. ACIP recommended that a more transparent and accountable process for utilising the Crown use provisions be introduced including the requirements for the Crown to seek prior consent from the patent or design owner and to seek Ministerial approval before invoking the provisions. ACIP also recommended introducing a remuneration standard and a process to facilitate an agreed remuneration for the patent or design owner. IP Australia is undertaking consultations with relevant Australian Government departments and key non-government stakeholders to assist in informing the Australian Government’s response to the Review’s findings. Other interested parties were asked to make their views known on the Review’s findings by 22 December 2006.

For more information, click here

Report on Patents and Experimental Use

On November 9, 2005, ACIP released a report on patents and experimental use, which examines whether some types of patents are constraining research and development in Australia, and whether current laws need to be amended. The report found that the law in Australia is still uncertain on whether researchers needed the permission of the patent owner before they could experiment on patented inventions. Although current industry practice allows certain types of experimentation on patented inventions, business practices are still subject to change.

ACIP recommends that patent law be changed to make it clear that research done for experimental purposes does not infringe patents, as long as it does not unreasonably conflict with the normal exploitation of a patent.

Click here for more information.

Update: Overview of responses to the Consultation Paper on ACIP Report 'Patents and Experimental Use'

On 8 November 2006, IP Australia released a paper which provides an overview of the submissions received in response to the questions raised in the Consultation Paper on the Advisory Council of Intellectual Property (ACIP) Report, ‘Patents and Experimental Use’. The Consultation Paper invited interested parties to comment on the different experimental use exemption provisions recommended by ACIP and the Australian Law Reform Commission (ALRC), and whether the interested party’s industry had been impacted by the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval.

For more information, click here

Click here for archived information regarding the public inquiry on patents and experimental use.

Click here for archived material on ACIP.

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.

Overview of responses to the Consultation Paper on ACIP Report 'Patents and Experimental Use'

On 8 November 2006, IP Australia released a paper which provides an overview of the submissions received in response to the questions raised in the Consultation Paper on the Advisory Council of Intellectual Property (ACIP) Report, ‘Patents and Experimental Use’. The Consultation Paper invited interested parties to comment on the different experimental use exemption provisions recommended by ACIP and the Australian Law Reform Commission (ALRC), and whether the interested party’s industry had been impacted by the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval.

For more information, click here

Click here for archived material

Professional Standards Board for Patent and Trade Marks Attorneys

Amendments to Regulations for patent and trade marks attorneys

According to the Professional Standards Board for Patent and Trade Marks Attorneys, amendments to the Patents Regulations 1991 and the Trade Marks Regulations 1995 are expected to commence on 1 July 2008 . The new Regulations will alter the requirements for registration as patent and trade marks attorneys, and change the disciplinary regime under which attorneys practise. These include changes to the employment skills required for registration as a patent attorney. There will also be a new requirement for continued professional education. Both patent and trade marks attorneys will need to have acquired a prescribed number of hours of continuing professional education when they apply for renewal of registration for the 2009/2010 financial year.

For more information, click here

Dispute resolution and professional development

In October 2005, the Parliamentary Secretary to the Minister for Industry Tourism and Resources released the Government Response to the Review of the Regulatory Regime for Patent and Trade Marks Attorneys and the Review of the Discipline Regime for Patent and Trade Marks Attorneys. The response is significant because the Government has accepted the recommendation to introduce continuing professional education as a pre-requisite for renewal of registration, and has also supported the use of mediation, where appropriate, in disputes between clients and their attorneys.

Click here for more information.

Update: Consultation Papers on changes to Patent and Trade Marks Attorney regimes

In October 2005, the Government issued its responses to the ‘Review of the Regulatory Regime for Patent and Trade Marks Attorneys’ and the ‘Review of the Discipline Regime for Patent and Trade Marks Attorneys’ produced by the Professional Standards Board for Patent and Trade Marks Attorneys. IP Australia has the responsibility for implementing the Government responses and on 18 September 2006, produced two Consultation Papers regarding the regimes. Written comments regarding the Consultation Papers were due by 9 October 2006.

For more information and to access the Consultation Papers, click here

Click here for archived material

Further update: Position Papers on changes to patent and trade mark attorney regimes

On 23 April 2007, IP Australia issued two Position Papers regarding the Discipline Regime for Patent and Trade Mark Attorneys and the Regulatory Regime for Patent and Trade Mark Attorneys. In October 2005 the Government issued its responses to two reviews of the Regimes produced by the Professional Standards Board for Patent and Trade Marks Attorneys. In September 2006 IP Australia sought comments on how it proposed to implement the Government’s responses. Following consideration of the comments received, IP Australia has decided that changes to the patents and trade marks regulations are needed and it will advise stakeholders when these changes occur. How IP Australia will implement the Government responses are set out in the two Position Papers.

For more information, click here

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Plant Breeder's Rights

Inquiry into extending the duration of plant breeder’s rights protection

The Plant Breeder’s Rights Advisory Committee (PBRAC) is developing an assessment framework to use when making decisions on whether to extend the duration of plant breeder’s rights protection. The PBRAC has released an Issues Paper that sets out the background and raises questions to which the PBRAC is seeking answers. Submissions closed Friday 8 June 2007.

For more information, click here

ACIP to review enforcement of plant breeder’s rights

In response to concerns raised about the enforcement of plant breeder's rights (PBRs), the Australian Government has asked the Australian Council on Intellectual Property (ACIP) to inquire into and report on issues relating to the enforcement of PBRs in Australia and to consider possible strategies to assist Australian PBRs holders effectively enforce valid rights. The review includes a consideration of whether there may be benefits from extending the jurisdiction of the Federal Magistrates Court to include PBR matters. ACIP expects to circulate an Issues Paper in February 2007 with a request for written submissions in early April 2007. ACIP also expects to hold consultations in 2007. ACIP is looking for interested parties who may wish to be involved in some, or all, of these activities.

For more information, click here

New website on plant breeder’s rights launched

On 13 April 2006, a new website on plant breeder’s rights (PBR) was launched by Bob Baldwin, Parliamentary Secretary to the Minister for Industry, Tourism and Resources. The website was developed by the Australian Centre for Intellectual Property in Agriculture (ACIPA) and the PBR Office in IP Australia. It provides comprehensive information on case law, commercialisation, enforcement and the relationship of PBR to other intellectual property rights.

To access the Understanding Plant Breeder’s Rights website, click here

For archived material, click here

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Trade Marks and Other Indications

Amendments to Regulations for patent and trade marks attorneys

According to the Professional Standards Board for Patent and Trade Marks Attorneys, amendments to the Patents Regulations 1991 and the Trade Marks Regulations 1995 are expected to commence on 1 July 2008 . The new Regulations will alter the requirements for registration as patent and trade marks attorneys, and change the disciplinary regime under which attorneys practise. These include changes to the employment skills required for registration as a patent attorney. There will also be a new requirement for continued professional education. Both patent and trade marks attorneys will need to have acquired a prescribed number of hours of continuing professional education when they apply for renewal of registration for the 2009/2010 financial year.

For more information, click here

Change of renewal period for trade marks

As of 28 March 2008, in accordance with amendments to the legislation incorporated in the Trade Marks Amendment Act 2006, the period in which a trade mark can be renewed after it is due will reduce from 12 months to 6 months. This brings the grace period for renewals under the Trade Marks Act 1995 in line with those allowed under the Patents Act 1990 and the Designs Act 2003. Trade marks due for renewal on or before 27 March 2008 will still be able to be renewed for up to 12 months afterwards. There is no change to the 12 month period prior to the renewal due date.

To access the Official Notice, click here

Consultation Paper on companies acting as patent or trade mark attorneys

On 17 October 2007, IP Australia released a Consultation Paper which considers a scheme that removes the current bar on a company carrying on business as a patent attorney. The proposed model provides for individual patent attorneys to retain personal responsibility for discipline and complaints; a Code of Conduct to apply to all individual attorneys within a company; and an incorporated patent attorney company must have at least one director who is a registered patent attorney. In addition, there is a compulsory requirement for all patent attorneys whether they are incorporated or not to have professional indemnity insurance. The Consultation Paper also sets out the amendments required to put the model in place to allow companies to describe themselves as trade marks attorneys. Written comments on the Consultation Paper were sought by 30 November 2007.

To access the Consultation Paper, click here

Request for comment on the future of the Madrid Protocol

On 10 September 2007, IP Australia announced that it is seeking comment from trade mark owners and their representatives on issues relating to the operation of the Madrid Protocol in the context of ongoing international consideration of the future development of the Madrid system. Comments should be received by 9 November 2007 in order for them to be considered when IP Australia contributes to a WIPO Secretariat paper at the end of 2007. However, as some of the issues will be discussed later in 2008, input at a later time would also be very useful.

For more information, click here

Amended legislation and examination practice in relation to divisional trade mark applications

New provisions for divisional trade mark applications came into effect on 27 March 2007. According to an IP Australia Official Notice dated 26 July 2007, the intent of the amended legislation was for the goods/services of the divisional application to be clearly divided from those of the parent application and to avoid duplication. A number of divisional applications filed on or after 27 March 2007 have been invalid. To avoid submitting an invalid divisional application, applicants must:

• specify the goods and/or services to remain in the parent [section 46(1)(c) Trad