If passed (as seems likely), the bill will: implement Australia’s obligations under the TRIPS Protocol; provide for cheaper litigation options under the Plant Breeder’s Act; provide for single patent application and examination processes for Australia and New Zealand, and for a single trans-Tasman patent attorney regime; and implement a number of administrative changes and corrections in the Patents, Trade Marks and Designs Acts.
I last wrote about this bill back in January, when IP Australia released an exposure draft, calling for public comment. No submissions in response to the call appear to have been published. In any event, the version of the bill introduced into parliament last week is almost identical to the exposure draft. I have prepared a marked-up copy showing the differences between the final version of the bill, and the exposure draft. (My earlier document showing the changes between the 2013 version of the bill and the exposure draft is also still available.)
The one substantive change between the exposure draft and the final bill is that a proposal to repeal section 185 of the Patents Act 1990 has been abandoned. If you are not familiar with section 185, you are not alone. I do not think I have ever previously had cause to look at it, mainly because it applies only to officers and employees of IP Australia, and is therefore not a provision to which a patent attorney would normally need to refer.
Basically, section 185 prohibits employees of IP Australia from doing certain things which have a clear potential to give rise to a conflict of interest, and which generally would therefore be contrary to the terms of their employment in the public service in any event. It is not clear to me why the decision to repeal the section has been reversed, however it could be political expediency – someone may have felt that a proposal coming out of IP Australia to repeal an offence that could only be committed by its own employees could perhaps be regarded unfavourably.
Purpose of the BillAs explained by Bob Baldwin, the Parliamentary Secretary to the Minister for Industry, in his Second Reading speech in parliament:
The Intellectual Property Laws Amendment Bill 2014 contains a package of measures, many of which will reduce red tape for those wishing to obtain or enforce their intellectual property rights and will provide more support for other countries facing health emergencies.
These measures are set out across six schedules to the bill.
TRIPS ProtocolSchedules 1 and 2 of the bill will amend the Patents Act to implement the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) TRIPS Protocol. The Howard coalition government accepted the TRIPS Protocol back in 2007, and I first wrote about it when draft legislation implementing this commitment was initially published for comment by IP Australia in 2012.
Essentially, the bill implements a compulsory licensing scheme under which Australian pharmaceutical manufacturers will be able to obtain a licence from the Federal Court to make generic versions of patented medicines and to export these medicines to developing countries with a demonstrated need, such as a public health crisis.
Litigation over Plant Breeder’s RightsSchedule 3 will amend the Plant Breeder's Rights Act 1994 to extend the jurisdiction of the Federal Circuit Court to include plant breeder's rights. The Federal Circuit Court (formerly the Federal Magistrates Court) provides a cheaper avenue than the Federal Court of Australia for proceedings involving relatively small claims.
The jurisdiction of the Federal Circuit Court was extended to include trade mark and designs matters by last year’s Raising the Bar reforms. Patents are now the only IP rights over which the Federal Court of Australia remains the primary forum in which legal proceedings may be initiated (although certain patent-related matters may be litigated in a state Supreme Court).
‘Single Economic Market’ ReformsSchedule 4 provides for single patent application and examination processes for Australia and New Zealand, and for a single trans-Tasman patent attorney regime.
The plan for a single application, search and examination process for Australia and New Zealand has been under development for some time – I first wrote about it back in February 2011 – and these amendments will put in place the machinery to make it possible. For example, the bill allows for an address for service of documents, which must currently be a physical address in Australia, to be in either Australia or New Zealand.
The proposal for a single trans-Tasman regulatory framework for Australian and New Zealand patent attorneys has been around since April 2011. This is likely to have very little impact on the Australian profession, however New Zealand attorneys were less than impressed when the idea was first floated for comment. Despite this, a bilateral agreement to implement such a regime was delivered in March last year, essentially as a fait accompli.
AdministriviaSchedule 5 makes a number of minor administrative changes to the Patents Act, the Trade Marks Act 1995 and the Designs Act 2003. These include reducing the document retention burden on IP Australia (now that most records are retained electronically), and correcting a number of minor errors and oversights in the Raising the Bar Act.
Non-Repeal of s 185Interestingly, the abandoned proposal to repeal section 185 of the Patents Act was included in Schedule 4 in the exposure draft, suggesting that it might have been intended to bring Australian laws regarding the conduct of patent office employees into line with those of New Zealand.
Section 185 prohibits conduct by IP Australia officers and employees that give rise to the potential for a conflict of interest. Specifically, the section provides that the Commissioner, a Deputy Commissioner or an employee must not prepare, or help to prepare, a patent specification or related document, unless they are an inventor of the corresponding invention. They also must not search the records of the Patent Office, other than in an official capacity.
The penalty for breaching the prohibition is 10 ‘penalty units’ (which I believe is currently A$1700).
Section 6 of the current New Zealand Patents Act 1953 not only prohibits officers and employees of the New Zealand patent office from drafting patent specifications and conducting personal searches of the patent records, but also from applying for or acquiring New Zealand patents. However, as far as I can see there is no provision similar to the current section 6, or the Australian section 185, in the NZ Patents Act 2013, which comes into effect in September this year.
It therefore appears that once Australian and New Zealand examiners are sharing the same work, they will not be subject to quite the same rules in relation to their ‘extracurricular activities’! In practice, however, I doubt this will make much difference, since other legislation, regulations and contractual terms would prevent any public servant from engaging in such activities anyway.
Conclusion – What Next for the Bill?It seems likely that the bill will pass through both houses of parliament with generally bipartisan support.
There is nothing in the bill that was not present in last year’s version, introduced by the then-government, now-opposition, Labor Party. The sections that were deemed objectionable by the then-opposition, now-government, coalition parties have been removed, and consultation duly conducted. The government clearly endorses the bill, and for Labor to now oppose it would be, and would be seen to be, nothing but petty political point-scoring.
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