20 January 2013

Good News for SMEs as IP Australia Takes Feedback On-Board

ListeningIP Australia has published an update on its ongoing IP law reform process, providing its response to feedback received from stakeholders in relation to proposed amendments to regulations implementing the Intellectual Property laws Amendment (Raising the Bar) Act 2012.

The good news for Australian inventors and small-to-medium enterprises (SMEs) is that, among other improvements to the proposed rules, IP Australia has backed away from plans to introduce a compulsory ‘preliminary search and opinion’ (PSO) process for certain new Australian patent applications.  As we explained in an earlier article, the original proposal would have disproportionately impacted smaller local applicants, requiring an additional up-front payment of A$2200 at filing of an Australian complete standard patent application. 

The PSO process will be available, upon payment of the fee, to any applicant wishing to take advantage of it voluntarily.

Other changes to be made to the draft regulations as a result of feedback received by IP Australia include:
  1. a reduction in a new search fee – proposed to be levied in all cases in which no existing Australian, foreign or international search results are available – from A$1710 to A$1400;
  2. the requirement for an applicant to provide a statement of entitlement will be shifted from filing (as previously proposed) to the time of requesting examination;
  3. the regulations will be amended to ensure that it is not necessary for a simple name change of a patentee to be advertised for opposition purposes;
Additionally, IP Australia has recognised the desirability of some modifications to proposed practices, which will not require amendment of the regulations.  This will include using electronic means (e.g. email) whenever possible for the filing and giving of evidence and documents in oppositions, to avoid disadvantaging parties due to postal delays.

Various minor amendments, corrections and clarifications will also be made to the draft regulations, based on stakeholder feedback.

SOME FEEDBACK REJECTED

Proposed regulations and practices that will be retained, despite concerns raised by stakeholders, include:
  1. there will be no introduction of a ‘support’ test (in addition to an ‘enablement’ requirement) in order for a priority claim to be valid;
  2. there will be no relaxation of new, strict, requirements for obtaining extensions of time during opposition proceedings;
  3. there will be no ‘cooling off’ period – i.e. an initial suspension of proceedings to allow for negotiation between the parties – introduced for patent oppositions;
  4. there will be no increase to the scheduled costs available to be awarded in opposition proceedings;
  5. there will be no change to the proposed scheme for suspension of the registration of patent and trade marks attorneys charged with (though not yet convicted of) am offence involving dishonest or fraudulent conduct;
  6. the period within which a request for examination must be made after a direction is issued by IP Australia will be two months (down from the current period of six months);
  7. the period within which all matters must be overcome, and an application accepted, following the issue of a first examination report will be 12 months (the current system permits up to nine months of paid extensions beyond this period); and
  8. IP Australia will retain the proposed power to direct that relatively straightforward matters be heard by way of written submissions only (rather than in person), regardless of the wishes of the parties.

THE PROCESS FROM HERE – A TIGHT TIMELINE

The story so far is that the Intellectual Property laws Amendment (Raising the Bar) Act 2012 was signed into law last April.  IP Australia published a first tranche of corresponding draft regulations on 21 September 2012. The remaining drafts were released for public comment on 11 October 2012, with the deadline for submissions set at 21 November 2012.

Representatives of IP Australia, including Director General Philip Noonan, also conducted a series of round table discussions of the proposed regulations with stakeholders around the country.  At the end of the meeting in Melbourne, Mr Noonan indicated that IP Australia hoped to release some form of response to the various items of feedback prior to Christmas, with a further draft of the Amendment Regulations to be made available early this year. 

This planned timetable appears to have slipped a little, which is perhaps not surprising given the time of year.  More importantly, however, IP Australia has clearly heard the input from stakeholders, and is planning a number of positive amendments to the draft regulations, prior to their implementation.

From here, IP Australia will need to prepare the revised regulations.  While we are focussing on patents in this article, regulations in relation to the Designs, Trade Marks and Copyright Acts are also being amended.  Proposed changes to the Trade Marks Regulations, in particular, raised even more queries and concerns than the Patents Regulations at the round table discussion in Melbourne.

The timetable for publication of the revised regulations is currently unclear.  According to an IP Australia representative with whom one of our colleagues has spoken in the past few days, the authority is ‘working hard on the iterative process following consultation and are working with the drafters and will get them out as soon as possible’ (a sentence which could, perhaps, only have emerged from a government department). The best commitment that IP Australia is now willing to give is that they hope to make the revised regulations available at least a month before they are to be implemented on 15 April 2013.

CONCLUSION

IP practitioners around Australia (and, no doubt, in New Zealand also) are currently engaged in an extensive (and expensive) process of educating clients, both local and foreign, about the coming changes to law and practice, as well as providing specific advice on the impact of the reforms in their particular circumstances.

The present summary of IP Australia’s response to the consultation process is therefore extremely useful, although ultimately it is the exact content of the final regulations that will determine exactly how the reformed system will work.  In some areas, too, IP Australia is promising additional clarification of practices through the associated explanatory memoranda, and through guidelines such as those in the relevant examination practice manuals.

While the reform process is undoubtedly a major undertaking, the sooner this information can be made available, the better.

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